As reported in our Newsletter of May 30, 2003, our Trademark Law revised to become effective on November 28, 2003, will bring about major changes. In order to bring our practices in line with international standards, the draft of Enforcement Rule of the new Trademark Law (Trademark Rule) is now posted in the website of the Taiwan Intellectual Property Office (TIPO) for public review.
It is anticipated that the revised Trademark Rule, as well as the new official fees, will soon be promulgated before or on the same day when the Trademark Law is put into force on November 28, 2003. According to the draft of the new Trademark Rule, the filing formalities for filing a new trademark application or renewal of trademark registration in Taiwan will be greatly simplified. Aside from the exemption of submission of user evidence for renewal application of a registered trademark in Taiwan, one of the significant changes will be related to no submission of trademark registration certificates will be required any more. Registrant from now on needs not submit the registration certificate for endorsement of renewal, recordal of change of name, license or assignment. In the future, the official letter issued by TIPO will serve as the certified copy for the recordal of renewal, change of name, license or assignment. If the registrant would like the registration certificates to reflect new changes, an application together with the official fee may be filed to request for replacement or re-issuance of the registration certificate.
Further, per the draft of the new rule, a general power of attorney will be valid for a period of five years from its execution date, provided the applicant’s name, address or representative who signed said power, remain unchanged. Starting November 28, 2003, please refer to the following for required documents:
Filing New Application
- Power of Attorney (simply signed – no notarization or legalization is required);
- Five prints of the trademark representation (plus another four prints for agent’s use); and/or
- Priority documents (if foreign priority is claimed).
Note:
- 1) Power of Attorney and priority documents may be supplemented within three months from filing of application.
- 2) Statement of use or relevant documents showing intention to use the mark is no longer required. Filing Renewal Application 1. Power of attorney (simply signed – no notarization or legalization is required); and/or 2. Certificate of name change or certificate of merger, if registrant’s name has been changed, or assignment has been made.
Note:
- 1) TIPO will no longer conduct substantive examination.
- 2) No user evidence is required. 2) Trademark registration certificate needs not be submitted.
- 3) If merger or assignment needs to be recorded as well, a separate recordal of assignment must be filed simultaneously.
Filing Recordal of Assignment
- Power of Attorney of the Assignor and the Assignee; and
- Deed of Assignment – simply signed by both parties concerned (or a notarized copy or a certified copy of the Deed of Assignment executed both by the Assignor and the Assignee).
- Certificate of Corporation of the Assignor and the Assignee if the Deed of Assignment was not signed by the same person who had signed the Power of Attorney.
Filing Recordal of License
- Recordal filed by the Licensor – 1) Power of Attorney of the Licensor; and 2) Particulars of the licensed trademark, such as trademark registration number, classification, licensed goods, duration of licensed period, and also the licensee’s name, address, and its representative.
- Recordal filed by the Licensee – 1) Power of Attorney of the Licensee; 2) A certified copy of the License Agreement (or a License Agreement signed by both the Licensor and the Licensee); and 3) Particulars of the licensed trademark, such as trademark registration number, classification, licensed goods, duration of licensed period, and also the licensor’s name, address, and its representative If you have any questions with respect to the contents in this Newsletter, please feel free to contact us per information provided below.
