Taiwan Intellectual Property Office recently announced two amendments on the required documents when claiming priority and filing divisional applications for trademark registration. These amendments are effective from July 13, 2015 and provided below.
Priority (including exhibition priority) document
The applicant who has first filed a trademark application in a member country of the WTO or a country which has reciprocal recognition of priority rights with Taiwan (or otherwise if the applicant has a residence or business office in WTO or such country), may claim priority of said first filed application within 6 months when filing the same trademark in Taiwan. In addition, if the applicant has displayed his goods/services under a trademark in an international exhibition held or recognized by the government of Taiwan, he may also claim exhibition priority within 6 months from the date of display when filing said trademark in Taiwan. The priority claim must be made at the same time when filing a trademark registration in Taiwan, followed by the submission of priority document within 3 months after filing of said trademark.
Basically the priority document must be an original copy issued by the local government, and photocopy can be submitted only (say, for multiple marks of separate applications claiming the same priority) by stating the serial number on file which the applicant has already submitted its original priority document to TIPO. However, since the information of a foreign trademark registration is now publicly available online, TIPO has exempted the applicant from having to submit an original priority document. Thus the applicant can now submit the photocopy of priority document by self-attesting that it is a true copy of its original ones.
Also, per the current practice, if the priority of a trademark application filed in EU or New Zealand is claimed when filing the same trademark in Taiwan, it is no need for the applicant to submit priority document since the local agent can access the internet to download and print out such document for filing in Taiwan.
Divisional application and its related documents
Per Taiwan Trademark Act, the applicant may file one or more divisional trademark applications on the designated goods or services from a pending trademark application or registered trademark while retaining the original application date of its original application. It is to be noted that the goods or services of each divisional application must neither overlap to each other, nor exceed the scope of the original application as filed. In the past, the applicant was requested to file duplicate copy of application with their appended documents such as power of attorney or priority document for each divisional application. TIPO has then developed an online examination system which the duplicate documents can be automatically produced depending on the number of divisional applications to be filed. Thus it is now not required for the applicant to submit duplicate documents for divisional application during the pending stage of a trademark registration (namely, duplicate documents are required only for filing the divisional application on registered trademark).
