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1.2 Basic Principles of the Trademark Act

The basic principles of the Trademark Act of the Republic of China are explained below:
Registration protection principle and exceptions: With respect to the acquisition of trademark rights, the Trademark Act of the Republic of China adopts the registration protection system. That is, a company's trademark that is used to identify the source of the goods or services cannot eliminate another party's right to use the same until an application for registration of the trademark has been filed pursuant to the law. With respect to the protection of a well-known trademark, the Trademark Act precludes any improper use of a well-known trademark by another party resulting in likelihood of diluting the distinctiveness or reputation of the well-known trademark. However, registration is not the requirement for acquisition of the protection. (§2, §30Ⅰ(10), §35, §70, Trademark Act)
The "first to file" principle means that the sequence of the acquisition of rights depends on the sequence of the examination of trademark applications. Where applications for registration of an identical trademark or similar trademark(s) designated for the same or similar goods have been filed, the application that is first filed shall be granted registration. (§ 22, §30Ⅰ(10), Trademark Act)
The "territory-based" principle means that the acquisition and cancellation of trademark rights depends on the applicable laws of the respective countries. The scope of trademark rights to be claimed is confined to the territory of the country where the trademark is registered, except in the case where the international registration system recognized by an international treaty is applicable. That is to say, no claim of protection in other countries may be made in respect of a trademark that is registered and protected in the Republic of China.
The "examination" principle means that a trademark can be registered in the Republic of China only after it has been examined to be in order. The application shall be disapproved if any violation is observed.(§14; §31; §32, Trademark Act)
The "use and protection" principle means that where a trademark is intended to be used, an application for registration of the trademark may be filed beforehand. However, to prevent the occurrence of where a registrant monopolizes a trademark right but has not used the trademark for an extended period of time, which will jeopardize another party's application and usage right, the Agreement on Trade-Related Intellectual Property Rights (TRIPS) and the Trademark Acts of other countries have provisions prescribing that the registration of such a trademark shall be revoked if it has not been continuously used for three years or five years. The R.O.C. Trademark Act sets the period at three years, i.e., if a trademark has not been put into use for three years after registration or has been continuously suspended from use for three years, the registration of the trademark shall be revoked.(§63; §65, Trademark Act)
The principle of an "opportunity to dispute": As trademark protection aims to avoid causing confusion, trademark rights may eliminate the scope of another party's registration and use, including as it pertains to similar trademarks and similar goods or services. The principle of registering a trademark after examination reduces the possibility of registered trademarks being challenged, and also lightens litigious burdens on trademark right holders or interested parties. However, trademark legislation of other countries provides an interested party to a registered trademark with an opportunity to file for opposition or invalidation to a reasonable extent.(§48; §57, Trademark Act)

  • Publish Date : 2008-04-23
  • Update : 2020-12-07
  • Organization : International Legal Affairs Office
  • Visitors : 1536

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