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Taiwan - Trademark Law Amended

The Trademark Law has been amended in order to enable Taiwan to meet the requirements of the TRIPS Agreement and to facilitate future membership of Taiwan in the World Trade Organization (WTO). The changes in the law are summarized below.

1) Previously, priority could be claimed on the basis of reciprocity established by agreement. The amendment has repealed this provision and an applicant whose country has established mutual recognition of priority rights with Taiwan in regard to trademark protection may claim the right to priority in Taiwan.

2) Color combinations are now eligible for registration. However, a single color is unregistrable subject matter.

3) The amendment provides that any mark, which may otherwise be unregistrable for lack of distinctiveness, may now be registrable, if the mark has acquired secondary meaning through long and extensive use by the applicant.

4) Under the amended law, any person, who in the ordinary course of use (i.e. in a form not considered to be trademark use) affixes his name, or the name, shape, quality, function, place of origin of the goods or other descriptions relating to the goods, may do so without any effective claims being raised by a trademark owner, except where such use is made in bad faith.

5) The period within which a trademark renewal may be applied for prior to expiration has been shortened from one year to six months. Belated renewal is permitted within six months following expiration of the registration, subject to payment of additional official fees.

6) The amended law provides protection for famous marks.

7) Under the previous practice, a lapsed registration remained a bar to the registration of a new application for two years after the expiration of the term of the registration, unless it was shown that the mark had not been used for more than three years prior to expiration of the registration. This provision has been abolished and a lapsed registration will no longer be cited against a new trademark application.

8) In infringement proceedings a trademark owner may now request the disposal or destruction of the infringing goods or the materials or equipment used to manufacture such infringing goods.


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© Copyright 1999 Ladas & Parry - Posted 10/11/1999
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