"A trademark" is also known as a brand, and is used for identifying the specific source of goods or services provided. In order to avoid confusion, to protect the rights of a trademark right holder and the interests of consumers, to prevent any unfair competition and to facilitate the development of an industrial or commercial business, the Trademark Act clearly prescribes circumstances under which a party may not file a trademark application and prohibits any party from plagiarizing another party's registered trademark.

The basic principles of the Trademark Act of the Republic of China are explained below:

(1)  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)  First to file principle

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.

(3)  Territory-based principle

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.

(4)  Examination principle

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.

(5)  Use and protection principle

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.

(6)  Opportunity to dispute
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.

A "trademark" is a sign that is used to distinguish one's goods or services from those provided by others. As the economy, culture, and the market diversify, the types of trademarks may now include a packaging design, three-dimensional object, sound, or even a scent. In the Republic of China, a trademark refers to a sign consisting of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. In addition, the minimum requirement of the trademark laws of every country is that a trademark must be recognizable to the general consumers as a trademark and is indicative of the source of the goods or services. Most generic names or direct or obvious descriptions of goods do not possess the characteristics of a trademark.

Legally, the registration of a trademark accords the right to eliminate another party's use of the same trademark or the right to license the same trademark to someone else. In addition to traditional trademarks labeled on goods or their packaging and containers, trademarks may also include some special forms such as three-dimensional, color and sound trademarks.

(1)  Three-dimensional trademark

A three-dimensional trademark is a sign consisting of a three-dimensional shape formed in three-dimensional space, whereby consumers are capable of distinguishing the sources of different goods or services. For instance, if the shape of goods or the shape of their packaging or containers can identify the source of the goods, it can be registered as a three-dimensional trademark.

(2)  Color trademark

A color trademark is a single color or combination of colors that is applied, in whole or in part, to the surface of goods or the container or to the place of business where services are provided. If a color itself can adequately identify the source of goods or services, not in combination with a word, figure or symbol, it may be registrable as a color trademark.

(3)  Sound trademark

A sound trademark is a sound that can adequately allow relevant consumers to identify the source of certain goods or services. For instance, a short advertising jingle, rhythm, human speech, peal, bell ringing, or the call of an animal can be registered as a sound trademark.

As the term suggests, a "collective trademark" is a brand commonly used by the members of a group. It could be a farmers' association, a fishermen's association, or other associations that are eligible for filing an application for registration of a collective trademark. All goods or services produced/manufactured or provided by the association members may label the collective trademark to distinguish those goods or services from goods or services produced/manufactured or provided by others. A collective trademark is intrinsically still a trademark. However, the major difference between a collective trademark and a trademark is that a collective trademark is used by the members of a group in connection with goods or services, while a trademark is used by the registrant for identifying his/her own goods or services.

A collective membership mark is a sign that serves to identify the membership of members in an association, society or any other group which is a juridical person and distinguish such members from those who are not members. The Lions Club, the Rotary Club, and a political party are all eligible for filing an application to register a collective membership mark for identifying their memberships. A collective membership mark has no direct relationship with business activities related to goods or services, as it simply identifies the organization of the membership of its members and will be displayed on relevant articles or documents, while a collective trademark identifies the goods or services provided by the members of the group using the trademark. They are different intrinsically.

A certification mark is a sign that serves to certify a particular quality, accuracy, material, mode of manufacture, place of origin or other matters of another person’s goods or services by the proprietor of the certification mark and distinguish the goods or services from those that are not certified, e.g., the Taiwan fine product sign, UL electrical appliances safety sign, ST toy safety sign, and 100% wool sign, which are familiar to the average Taiwanese consumer. An applicant of a certification mark must be a juristic person, group or government agency that is capable of certifying an entity's goods or services. The use of a certification mark shall mean that the right holder of a certification mark, in order to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, permits that person to display the certification mark on articles or documents in connection with the goods or services.

In order for a trademark to clearly identify the source of the goods, the design of a trademark should take into account the following matters:

(1)  Distinctiveness

If a trademark has distinctive features, goods bearing the trademark will stand out among other goods of the same kind and thus leave a deep impression on consumers. A distinctive trademark is easily understood, read and memorized. For instance, "穩潔" (Windex), "一匙靈" (one spoon effective) and "好自在" (Carefree).

(2)  Symbolism

If a trademark itself reflects the mission statement of a company and the features, functions and nature of the products, by looking at the trademark, consumers can understand the mission statement of the company and the features of the products. For example, the use of "美好挺" (good, fine, stiff) for clothing and the use of "克蟑" (cockroach preventer) for insecticides clearly show the features and functions of the goods. "和成HCG" for bathroom equipment was initially designed in rigid and mechanical block typeface and later changed to an elegant, soft and modern typeface, which incorporates the mission statement of the company, that is, creating a clean, excellent and comfortable life.

(3)  Originality

A trademark is not derived from existing words/phrases or things but from original thoughts. For example, "IBM" for computer goods, "SONY" for audio equipment," "KLIM" for milk powder, and "捷安特" (Giant) for bicycles are all original words and have strong distinctiveness. The use of them by another party can hardly be a coincidence but should be considered plagiarism. Thus, these words are granted more protection under the Trademark Act. As to common words, because they are not original, another party's use of them for dissimilar goods can hardly be considered malicious. When an enterprise using a trademark that contains common words is developing an affiliation and is diversifying its operations, it may find that its trademark has been registered by another party.

(4)  Strive for uniformity with the company name

A trademark not only identifies the source of goods but is also a symbol of business reputation. Thus, if a trademark corresponds to the name of a company, it will be helpful in popularizing the company, and in deepening the consumers' impression of the company/trademark. As trademark registration and the registration of a company's name are governed by the Trademark Act and the Company Act, respectively, the public should first search for relevant registration information by accessing the websites of the competent authorities. Making the appropriate registration will eliminate the situation where a trademark has been registered as another's company name or where a company's name has been registered as another's trademark, which could result in confusion to consumers and give rise to trademark disputes.

In filing a trademark application, an application form should be prepared. The filing date is taken to be the date when the relevant documents are received by TIPO or the postmarked date. Delivery of the application via facsimile is not allowed. In addition, the application shall be accompanied by the following documentation:

(1)  Application specifying the name and address of the applicant, the proposed trademark, the class of the designated goods/services and the names of the goods/services;

(2)  Clear trademark representations;

(3)  Government fees;

(4)  Where a trademark agent has been appointed, the Power of Attorney (if in a foreign language, a Chinese translation is required);

(5)  The application must be signed or sealed. If a trademark agent is appointed, the application may be signed or sealed by the trademark agent only.

Generally speaking, any domestic or foreign natural person, juristic person or business entities (business establishments or firms) who use a trademark to identify the goods or services they offer in trade, may file a trademark application in the name of an individual, juristic person or business entity, except for collective trademarks, collective membership marks and certification marks, which are subject to the following rules:

The applicant of a collective trademark or collective membership mark is restricted to business associations, social organizations, or groups that exist as a juristic person. In filing an application, the applicant must submit the certificate of incorporation proving that the applicant  has been registered with the competent authority and has completed recordation as a juristic person with a court. The applicant must also comply with the regulations governing the use of the collective trademark or collective membership mark, specifying membership qualifications and the regulations controlling the use of the collective trademark or collective membership mark.

The applicant of a certification mark is restricted to juristic persons, groups or government agencies who are capable of certifying another party's goods or services. In filing an application, the applicant must submit documents specifying the qualifications or capability to issue the certification, requirements for labeling the certification mark, the rules governing the use of the certification mark, and a declaration stating that the applicant does not engage in the manufacturing and marketing of the goods to be certified or provision of the services to be certified.

A trademark application may be filed either by a trademark agent or by the applicant himself/herself. Members of the general public may prepare and submit a trademark application, but the application must comply with the requirements set forth in the Trademark Act.

A foreigner who has no domicile or place of business within the territory of the Republic of China (ROC) must designate a trademark agent who has a domicile in the ROC to handle trademark matters. However, a foreign company that has set up a branch office according to the Company Act of the ROC is not required to appoint a trademark agent since it can indicate the place of business in the ROC and its representative.

If a trademark agent is appointed, the trademark agent shall be notified of all procedures relating to trademark application and further submissions or corrections aimed at perfecting the application.