There are three reasons why Asia should not be ignored by ambitious companies. The first is the demographics of the region as a whole. Market potential today and in the future is a derivative of demographics. And in principle, it makes no difference whether a company wants to buy in Asia or sell here. In both cases it can only benefit. And in the case of Taiwan, we are talking about a market with an annual GDP per capita of $32,800 (for 2022). By comparison, Spain’s GDP will be almost the same over the same period. That of the UK is only 40% higher.
After a period of analysis, the expansion plans of companies often have one thing in common – the registration of a trademark. In the case of overseas expansion, this refers to the market in which the company intends to sell or buy under its own brand. And this question always arises in the context of Taiwan, as well as other territories:
is it worthwhile to register a trademark in Taiwan now or at a later stage when business is picking up again?
In essence, it is a question of budget efficiency, which is understandable for small businesses. At Trademark Partners we follow the #File1st® principle. This means that it is better and more cost-efficient to register a trademark in advance than to try to recover it later – if it can be recovered at all.
To find out if a Chinese trademark certificate is valid in Taiwan, read our other article.
The Taiwan Intellectual Property Office is responsible for maintaining the trademark register in Taiwan. It is this office that processes applications for protection that are referred to it.
There are two ways to file an application. The first recommended method is local filing. This involves filing the application directly with the Taiwan office. This is done in cooperation with a professional representative such as Trademark Partners. The advantage of filing locally is that you can get advice from an attorney on the choice of products or services, taking into account the realities of the territory.
Another advantage is the direct contact between the local representative and the Office. This is crucial in the event that an objection or appeal needs to be filed quickly. A professional lawyer already knows the client and has direct contact with him. In such cases, the speed of cooperation means that they will be able to act within the given time limit to finally secure the protection of the mark.
The second way to apply for protection is through international institutions. This is a convenient way of applying, but it has two main disadvantages. It is slower because the international institution first processes the application in its own area, which can take up to a few months. Then it goes to the local office anyway, where it is processed ‘from scratch’. The second inconvenience is that by submitting the application in this way, the applicant has no designated representative. If he or she needs to appeal against a refusal or opposition, he or she will have to hire a professional lawyer, usually under time pressure, to submit the appropriate legal letter to the Taiwanese office on his or her behalf.
Applications for protection in Taiwan are processed in approximately 9-12 months. If the office is initially satisfied that the mark can be protected, it will issue a protection order. This is followed by the publication of the mark, which is the period during which anyone can file an opposition to the registration of the mark. Of course, the opposition must be based on prior rights or other grounds.
The applicant must wait for a three-month publication period to be sure that the protection granted will take effect. If it does, the mark will be protected for ten years.
However, if an opposition to registration is received, a separate phase of the procedure begins. The applicant can respond with his arguments within a given time limit. Such an action is only possible with the assistance of a local professional local attorney.
