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Voluntary Report - public distribution

**Date:** 12/19/2003

**GAIN Report Number:** TW3050

TW3050

**Taiwan**

**Food and Agricultural Import Regulations and Standards**

**Registering Trademarks in Taiwan**

**2003**

**Approved by:**

![](media/image1.wmf)Jonathan Gressel

American Institute in Taiwan

**Prepared by:**

Eric Trachtenberg & Rosemary Kao

**Report Highlights:**

Recently, a Taiwan wholesaler improperly registered as trademarks 27
brands belonging to U.S. onion exporters, causing a trade disruption. To
protect their brands, the Taiwan Intellectual Property Office (TIPO)
strongly recommends that all U.S. exporters register their trademarks in
Taiwan. This report outlines Taiwan's trademark registration procedures.

Includes PSD Changes: No

Includes Trade Matrix: No

Unscheduled Report

Taipei \[TW1\]

\[TW\]

# Taiwan Company Registers Trademarks and Disrupts Trade

On November 25-26, a Taiwan onion importer and a U.S. exporter notified
AIT that Taiwan police were confiscating U.S. onions for trademark
infringement. Taiwan's Intellectual Property Rights Office (TIPO)
informed AIT that a relative of a Taiwan wholesaler had registered 30
different U.S., New Zealand and Japan onion brand names as his own
trademarks on July 16, 2003. These registrations were granted even
though they were submitted *en masse* and for brand names used by U.S.
exporters for many years in the Taiwan market. On December 2, AIT was
informed that the trademark registrant was supposedly asking NTD 2
million (\~\$60,000) from each importer for permission to use \"his\"
trademarks.

Although the police raids were not repeated, the ambiguous status of
U.S. onion brands and trademarks in Taiwan temporarily disrupted trade
and raised serious concerns amongst Taiwan traders. Beyond onions, the
parasitical trademark registrations highlighted the vulnerability to
other possible registrations of other U.S. fruit and vegetable brands
marketed in Taiwan, creating the possibility of much larger trade
disruptions in the future.

While Taiwan's regulations ban the registration of trademarks well-known
in the trade, the onion trademark registrations went forward because
TIPO lacked contacts in the fruit and vegetable trade and received no
objections to the registrations. As a result, U.S. trademark holders
will likely have to turn to legal channels to invalidate the Taiwan
onion trademarks, a process that could take at least six months. AIT is
working with TIPO and U.S. exporters and State offices to facilitate
this process. To forestall future parasitical trademark registrations,
AIT has given TIPO trade contacts that will allow them to verify the use
of imported trademarks.

###### Protecting U.S. Trademarks and Brands

To protect U.S. brands and trademarks, TIPO strongly recommends that
**[all]{.underline}** U.S. exporters with a trademark, brand, variety or
other related intellectual property rights (IPR) register them as
trademarks as soon as possible. Although TIPO committed to conduct due
diligence on further food related trademark registrations, the best way
to protect an exporter's IPR is through registration. To facilitate this
process, exporters should consider obtaining legal representation in
Taiwan. An updated list of Taiwan Legal Services providers can be found
on the U.S. Department of Commerce's BuyUSA.gov web site at:

<http://www.buyusa.gov/taiwan/en/bsp.html?bsp_cat=80120000>

To reduce costs, exporters and their associations may consider working
together and/or with their State Representative Offices in Taiwan.
Currently, Alaska, Arizona, Delaware, Florida, Hawaii, Idaho, Indiana,
Kansas, Louisiana, Maryland, Missouri, Montana, Nevada, New Mexico,
Oregon, Texas, Vermont, Washington and West Virginia have offices in
Taiwan. The most current contact list is located at the American State
Offices-Taiwan site:

<http://www.asoataiwan.org/2003members_english.htm>

**Trademark Registration Procedures\
**This information below is taken from TIPO. Note that the trademark
registration fee is NT\$4,000 (US\$120) for each registration, which
must be translated into Chinese. TIPO also recommends that foreign firms
appoint a local agent.

Further information on trademark registration can be found at:

<http://www.tipo.gov.tw/eng/howto/procedures-t.asp>

***Registration of Exclusive Use of Trademark\
\
***[A. Basis for Filing]{.underline}

Any entity that desires to introduce a mark to distinguish its goods
from those of others with the intent to use the mark in commerce may
apply for the registration of exclusive use of trademark in accordance
with the Trademark Law.

[B. Documentation:]{.underline}

1\. Application form (available at BIP co-op at NT\$10 per copy or by
mail order with the payment remitted to Postal Remittance Account No.:
0107027-2).

2\. Fees: NT\$2,500 for each registration of principal or associated
trademark, NT\$4,000 for each registration of defensive trademark,
payable to "Intellectual Property Office, Ministry of Economic Affairs"
in the form of personal check, cashier's check or postal remittance to
Account No.: 0012817-7. (Note: A defensive registration may be used to
prevent others from adopting marks that come too close to a firm's
existing or future trademarks).

3\. Trademark device, in 15 copies (use paper of sturdy material and
smooth surface with approximately 5 cm in length and in width. If the
trademark device is in color, submit additionally three copies of the
device in black and white).

4\. Document evidencing the intent to use in any of the forms provided
below:

Foreign merchant:

> a\. Corporate identification paper indicating the business of
> designated goods or proof of nationality.

b\. Declaration stating the business in connection with the designated
goods.

> c\. Photocopy of registration certificate of the same trademark under
> application that indicates designated goods issued by a major country
> or the applicant's home country.
>
> d\. Information of the designated goods as advertised in newspaper or
> magazines (domestic and foreign) or product catalogue, in original.
>
> e\. Articles of Incorporation or business registration certificate
> issued by the presiding authorities of the home country.
>
> f\. In the event a subsidiary or a company under its holding is
> running the business of the designated goods, any of the documents
> described in a \~ e above as well as a document evidencing the
> relationship of subsidiary or holding.
>
> g\. Business certificate may be exempted if the designated goods are
> readily discernible from the name of the corporate applicant.
>
> h\. Translated text in Chinese if any of the aforesaid documents is
> presented in a foreign language.

5\. Proof of scope of business is exempted for the registration of
defensive trademark.

6\. Power of attorney, if a trademark agent is appointed; applicant who
has no domicile or business place in the Chinese Taipei should appoint
an agent to act on his behalf.

[C. Application Procedures:]{.underline}

1\. Applicant may deliver a properly filled and signed application form,
together with the required fees to the trademark receiving counter of
IPO in person or by registered mail.

2\. IPO will notify the applicant to submit additional documents or pay
fees in full if the application or other proceedings do not conform to
the established procedures or format, or fees are not paid in full, or
the devices presented are unclear or incomplete, or the scope of
business shown in the business certificate is not consistent with the
designated goods. Please be noted that usually there is a time limit to
comply with these instructions.

3\. Any trademark application made and other proceedings instituted
beyond the statutory or the designated period will be rejected. But the
aforesaid provision does not apply where the delay is due to force
majeure or other causes not attributable to the party concerned, and
such fact has been proven true after investigation.

4\. Once the trademark under application passes the examination, the
trademark authority will, in addition to serving a written decision of
approval to the applicant and his agent, publish it in an official
gazette. Registration will be granted only if no opposition is
instituted within three months from the publication by any interested
party or if a decision dismissing such opposition has become final.