Does anybody know the regulations and rules here in Taiwan? I was told that a foreigner cannot register a trademark here, but needs a Taiwanese agent. This agent will then have to pay tax for registering. This sounds like a dead end…
I’d page Tigerman Esq. mesheel…
Not a dead end at all Mesheel. You’re right that a foreigner must appoint an agent to register the mark, but that simply means signing a Power of Attorney authorizing the local attorney or trademark agent to file the application for you. People and companies do that all the time. I believe the total cost of govt fees and the attorney fees for registering one mark in up to 20 classes of goods will probably be about 15-20,000 NTD.
Below is some information I prepared on the subject. If you need assistance I recommend you contact either Tigerman or Mofanganren.
How are trademarks defined?
Taiwan law defines a trademark as any word, figure, symbol, color, sound, three-dimensional shape, or combination thereof, that is used to identify goods or services, is distinctive enough for relevant consumers to recognize it as an identification of such goods or services and to differentiate such goods or services from goods or services offered by others. Previously, Taiwan law treated trademarks and service marks differently, but the distinction was eliminated when the Trademark Law was amended in November 2003.
Is registration required to protect a trademark?
In general, yes. Unlike the US, Taiwan has no common-law system of trademark protection that grants rights based on prior use of a mark. In general, one gains the exclusive right to use a particular trademark in Taiwan only through registration, so unless a company
Thank you very much, Mother Theresa, for this information.
This however sound quite unfair, since the government cost alone would only have been about 4-5000NT. Now being a foreigner I need to hire an attorney to do the work for me and spend another 10-15’000NT on that… 
Oh well… Taiwan… :s
[quote=“mesheel”]Thank you very much, Mother Theresa, for this information.
This however sound quite unfair, since the government cost alone would only have been about 4-5000NT. Now being a foreigner I need to hire an attorney to do the work for me and spend another 10-15’000NT on that…
Oh well… Taiwan… :s[/quote]
Well, if you don’t want to register your mark don’t, but . . .
a) Did you expect the atty/agent will perform the services for free? Of course they expect reasonable compensation for their time and effort communicating with you, preparing and getting the signed Power of Attorney, filing the application, etc.
b) 10-15,000 NTD for an attorney’s services doesn’t sound like much to me at all (that’s less than 2 hours at my standard hourly rate, which is totally in line with other attorney’s rates), and
c) I don’t know for sure what they would charge you. You’ll have to ask, as that was just my estimate.
Anyway, I suggest you speak with Tigerman before making a decision.
[quote=“Mother Theresa”]
Yes. The Trademark Law prohibits registration of a mark that is
Mother Theresa,
it’s not the attorneys fee that is unfair, it’s unfair that I as a foreigner have to hire an attorney, but any Taiwanese could do it on their own. 
[quote=“sojourner”][quote=“Mother Theresa”]
Yes. The Trademark Law prohibits registration of a mark that is
I see. I believe their reasoning is that in the event someone wants/needs to contact a local trademark owner it’s relatively easy; but foreign owners may be harder to contact, so they need to have a local contact who can handle their trademark affairs. Maybe that’s not reasonable, but I would guess that’s their explanation.
Is there a trademark agent/attorney in the forumosa community?
Can anyone recommend a trademark agent/lawyer?
I have my APRC and open work permit. I would like to register a trademark.
Any advice on how to proceed will be greatly appreciated.
Tigerman’s still the man you want to speak with.
Uhm… why would you want to register in that many classes? And would you even be permitted to register in a class that is irrelevant to your products/services?
I forget why I wrote that 5 years ago, but it’s possible the first category of filing fee covers not just one class but up to that many classes. I don’t know, just guessing, as I did some trademark work back then but haven’t done so since.
As for your second question, I’m fairly certain they won’t prohibit you from registering a mark in multiple classes – why would they? how could they know how you intend to use the mark? Instead, I believe even if you register the mark in a certain category, someone else can later file an action to invalidate it in that category if you haven’t actually used it for that class of goods. So you can register it in 100 classes if you want, but you then must use it in those classes to preserve your rights.
You’ll have to wait for Tman to respond to get the definitive answers though.
I assume you are talking about these trademark classes
dialogselect.com/help/TrademarkCodes.html
Of which there are only 45.
And once you start to look at how different they are, I believe there’s really few cases where you’d want to register the same mark in something like 20 classes.
In my own experience we’d register in no more than 3 classes. So it doesn’t get that expensive if you only want to register in one country, but if you’re trying to do this globally, you’re looking at spending years and millions of NT dollars.
Also, I’ve noticed that these days, smaller companies just go with a TM to claim the trademark.
And why would they block you from registering in 20 classes? That’s simple. To prevent ‘Trademark cockroaches’ such as those operating in China and Eastern Europe. The process of challenging a trademark because it’s not being used can take years, and for a professional ‘trademark cockroach’, they’ll know how to produce something to make it appear as if they actually are using the trademark. I’ve been through such a case that took more than 5 years to resolve.
[button]WIPO,http://www.wipo.int/classifications/nivilo/nice/index.htm?lang=EN#[/button] INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES
[button]TIPO,http://www.tipo.gov.tw/en/AllInOne_Show.aspx?path=2532&guid=5b1c65cb-267c-4d0d-b95c-275ad8f50fc4&lang=en-us[/button] Intellectual Property Office
Regulations of Trademark Fees ( English ) ( Chinese ) I can’t access the English info. Can you?
I would like to register
Class 25: 30-40 items (about NT$5,000-when using outdated info from 2003: printed off this info in 2008)
Class 35 (about NT$ 3,000)
Class 41 (about NT$3,000)
For Class 35 and Class 41, is it a set fee per whole class?
Does anybody have a ball park quote for the above classes? I will do all the paperwork through a trademark agent, due to the fact that it is the first time venturing into this domain.
[button]Trademark Application in Taiwan,http://www.mission.com.tw/engQA01.asp[/button]
I want to register a trademark.
I have a unique name to register (so far in my search: no matching names in the gazettes/journals). I have my business name in a design format as well.
Should I register (1) a standard character format; (2) a stylized/design form or (3) both (done separately)?
There are two possible mark formats: (1) standard character format; or (2) stylized or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark; do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format.
from [button]TMRT,http://www.uspto.gov/trademarks/basics/index.jsp[/button]
[quote=“GRC22”][button]Trademark Application in Taiwan,http://www.mission.com.tw/engQA01.asp[/button]
I want to register a trademark.
I have a unique name to register (so far in my search: no matching names in the gazettes/journals). I have my business name in a design format as well.
Should I register (1) a standard character format; (2) a stylized/design form or (3) both (done separately)?
[/quote]
To make the best judgment I’d have to see what you are trying to protect, but it sounds like you are primarily looking to protect the name, which means (1) standard character format. This gives the best overall protection. I’d only bother with (2) if the design of the logo was so unique that it no longer resembles characters, and its likely that I counterfeiter could take advantage of this to make a logo that was visually very similar to yours.
Yes. That’s about the same advice that I would give. I usually advise that registering a word mark (standard character format) provides the best/most complete protection vis-a-vis a stylised mark. However, if a mark in stylized script (I’m not talking about a design/logo mark) is very distinctive and or already well-known, I might advise registering the stylized mark. Coca-Cola in stylized script is registered, as is the ribbon that accompanies the stylized Coca-Cola mark. That ribbon even has a name: Dynamic Ribbon Device.
Of course, most applicants don’t have such a distinctive stylized mark. Anyway, its often as much a business decision, and I’d want to see the mark and understand how it is/has been used before providing an opinion specifically with respect to that mark.