- For Taiwan trademark applications in 2021, there is a total of 95,917 new cases, of which 73,374 filed by applicants from Taiwan, 4,929 from mainland China, 4,032 from the United States, 3,437 from Japan, and 10145 from other country or region. These applications correspond to an overall of 123,217 classes, as a multi-class trademark application can be filed in Taiwan.
- The first examination opinion (office action) for a Taiwan trademark application is issued at about 4.9 months, and the average examination period is 6.2 months. Generally, the allowance rate of trademark applications could be as high as 90.57%.
- Taiwan adopts Nice International Classification, the goods are classified into Classes 1-34 for commodities, and Classes 35-45 for services. Under these classes (類), there are “subclasses (組群)” with 4 digits, followed by “groups (小組群)” with 6 digits. For the designated goods or services when filing a trademark application, the Applicant is usually required to state clearly the name of the goods, and it must not be too broad or vague, which may cross the class or has ambiguous meanings.
- The following are reasons often cited in Office Action (OA) of Examination Opinion for a Taiwan trademark application:
| Formality reasons | 1. Inappropriate goods name (too broad and vague) | about 60% |
| 2. Inappropriate classes for goods | about 15% | |
| 3. Inappropriate trademark name | about 15% | |
| 4. Others | ||
| Substantive reasons | 1. The trademark is identical with or similar to a prior registered trademark, hence may cause likelihood of confusion | about 60% |
| 2. The trademark per se is lacking of distinctiveness | about 15% | |
| 3. A part or all of the trademark does not possess distinctiveness, and disclaimer must be made | about 15% | |
| 4. The trademark per se is likely to mislead the public as to the place of origin of the goods or services | about 5% | |
| 5. Others |
- Possible responses to overcome the Office Action for Taiwan trademark application
| Reason | Correspond | Success rate |
|---|---|---|
| The trademark identical with or similar to a prior registered mark which may cause likelihood of confusion | 1. Deleting the goods/services which is identical with and/or similar to the prior registered trademark | 100% |
| 2. Filing a revocation trial against the prior registered trademark for non-use | 80% | |
| 3. Filing an opposition or invalidation against the prior registered trademark | 70% | |
| 4. Obtaining a co-existence consent or agreement from the prior registrant | ||
| 5. Response asserting the goods are not identical or similar, or arguing the differences with the prior registered trademark | 50% | |
| 6. Negotiating to purchase or transfer of the prior registered trademark | 50% | |
| 7.Filing a divisional application (acceptable portion as an case, whereas the disputed portion as another case to be continued for proceeding one of above measures) | ||
| Trademark lacking of distinctiveness | 8. Providing evidence which shows the trademark has been registered in Taiwan or other countries,and/or used in Taiwan/other countries, asserting the trademark possesses secondary meaning or acquired distinctiveness |
- Generally, in asserting the trademark being different from the prior registered trademark, or in proving the trademark being lacking of distinctiveness, the applicant can produce as many as possible the foreign trademark registration certificates and user evidences in Taiwan/foreign countries. The more evidences/documents are submitted, the more chance may be accepted by the Examiner in Taiwan.
