Does my licensing partner in Canada need to register their trademark in Taiwan as well?

My company is planning to license a product from Canada and sell it in Taiwan. They have been selling the product on Amazon for 5 years now. My company plans to import it to Taiwan and distribute it in retail shops and via e-commerce (we will set up stores on Shopee, EZ66, etc).

I’m going over the licensing agreement and there is one section that explains that they will be responsible for “…registering, maintaining, and updating at its own expense all rights in the trademarks and domain names in the Territory defined in this Agreement.” Sounds good - but this got me wondering if they will need to register their trademark in Taiwan, since Taiwan is not a member of WIPO.

image

Does anyone know if an extra step should be taken to search for and then register the trademarks in Taiwan, even if the trademark is registered around the world? The licensing partner is a small company based in Canada, so they might appreciate my company taking care of any Taiwan-related trademarking (we could ask for more from them as part of our negotation)

Yes, if you do not register the trademark in Taiwan, it is not protected, and someone else could do so and claim ownership of the mark here.

1 Like

Thank you