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8.4.2 What steps need to be taken if a licensee desires to sublicense the registered trademark to another party?

Unless otherwise prescribed in a licensing contract, an exclusive licensee is entitled, within the scope of the license, to sub-license the registered trademark to another person.
A non-exclusive licensee shall not sub-license the registered trademark to another person, unless the proprietor or the exclusive licensee consents to the sub-license.
A sub-license shall have no locus standi against any third party unless it is entered in the Register by the Registrar Office. (§40, Trademark Act; §38Ⅳ;§38Ⅴ, Enforcement Rules of the Trademark Act)
Application: the applicant may download the application form from the website at https://topic.tipo.gov.tw/trademarks-tw/np-533-201.html, or purchase the application form in person at the Counter located on the 4th floor of TIPO at NT$2 per page (tel: (02)23767164, 23767165), or by postal remittance to A/C No. 0012817-7, pay to the order of "the Intellectual Property Office of the Ministry of Economic Affairs".
The application shall also include the following:

Government fee: NT$2,000 per application.
Documents proving that the trademark right holder agrees to the sub-license.
The sub-license agreement, or the excerpted sub-license agreement or other certificates (in the case of foreign companies, a Chinese translation shall also be submitted; in the case that the applicant is the licensee, certificate of sub-license may be exempted.)
If a trademark agent is appointed, a power of attorney is required (if the power of attorney is in a foreign language, a translation thereof shall also be submitted).

  • Publish Date : 2008-04-24
  • Update : 2022-07-26
  • Organization : International Legal Affairs Office
  • Visitors : 743

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