After acquiring the rights to a trademark, the registrant shall, in particular, note the following matters:

(1)  Renewal of the term of trademark rights

Please don’t forget to file the registration renewal within six months prior to the expiration of the term of trademark rights.

The term of trademark rights is ten years. A renewal application shall be filed prior to the expiration of the term and each renewal is limited to ten years. In the case of failure to apply for renewal by the expiration of the term, the trademark rights shall become extinguished the day following the expiration of the term of trademark rights. For instance, in the case that no renewal application is filed for a trademark whose registration is published on January 1, 2004, the trademark rights will become extinguished at 00:00 on January 1, 2015.

(2)  Continuous use of the trademark

The lawful acquisition of trademark rights after the registration of the trademark not only means the acquisition of the rights to exclusively use the registered trademark, but it also precludes another person from using an identical or similar trademark(s) on the identical or similar goods or services. If a trademark right holder does not actively use his/her registered trademark, not only can the goodwill related thereto not be accumulated, but it will also hinder others from entering the market. The occurrence of the above will contravene the purpose of trademark protection. If a trademark has not been used or has been continuously suspended from use for three years after its registration, the registration of the trademark shall be revoked.

(3)  Recordation of licensed use

Due to operational concepts, the trademark rights may be licensed to another party, in whole or in part. Unrecorded licensing may not be set up as a defense against any third party.

(4)  Prohibition of changes or additional notes to the trademark, whereby the trademark is made identical with or similar to another person's registered trademark.

Please use the trademark as it is registered and do not use the trademark with any changes or additional notes thereon.

Prohibition of changes or additional notes to a trademark mainly avoids improper use of the trademark. That is to say, the clause is to prevent the situation in which a trademark is not used in accordance with the trademark as registered, but instead, the trademark in use features any change or additional wording or device, thus making the trademark insinuate another person's goods or cause the public to misidentify the trademark as belonging to another. If the rights and interests of the right holder of another trademark are thereby affected in practice, the registration of the said trademark shall be revoked by law.

Correct use of a registered trademark is the basis for maintaining the trademark rights. The use of a registered trademark shall suffice to allow consumers to identify the source of certain goods or services. To prevent a registered trademark from losing its distinctiveness, it should not be used as a generic name or description of goods or services.

(1)  Trademark labeling in a distinctive form.

Trademark labeling is different from the description of goods or a decorative pattern, but instead, shall suffice to allow consumers to recognize it as an identifier for distinguishing the goods or services it represents from those provided by others. This is to prevent consumers from considering it as a general name, shape, or other description of those goods or services.

(2)  The trademark in use shall be the entire trademark as registered.

The registration of a trademark invests the holder with the right to exclude another party's use of the identical or similar goods or services in respect of the identical or similar trademark. Therefore, the entirety of a registered trademark shall be used and no division shall be made. Otherwise, the registration may be revoked because the registered trademark has not been put into use.

(3)  Do not make any changes or additional notes to a registered trademark such that the trademark may be misidentified as another party's.

Through the publication of a registered trademark, a third party is able to know the contents of the trademark and avoid making the same design or infringing upon the trademark. Thus, a trademark right holder shall use the trademark as it was registered, and shall not make any changes or additional notes thereon. If the use of a registered trademark insinuates another party's goods or services such that confusion is likely to occur, the registration of the trademark may be revoked. If so, the original trademark right holder shall not be eligible, within three years from the date of revocation, to register or to be assigned or licensed to use another trademark identical or similar to the originally registered trademark.

The use of a trademark shall avoid insinuating anything or any improper behavior that may mislead the public as to the nature, quality or place of origin of the goods or services. In the case of occurrence, the registration of the trademark may be revoked.

The identity of a trademark means that in order to comply with the goods or their packaging, container design or operation, a trademark right holder, while actually using the trademark, labels the trademark in a manner that is not exactly the same as the registered one, such as a slight change made to the colors or typeface, but the commercial impression formed by such trademark in use is still deemed identical to the impression conveyed by the registered one according to general concepts prevailing in the society. This is still deemed a use of the registered trademark.

The use of a trademark includes the use of a trademark for importation or exportation use, and is not confined to the marketing of the trademark in the domestic market. For goods bearing a registered trademark in the ROC for exportation use, even if these goods are not marketed domestically, the trademark still aims to identify these goods as coming from a manufacturer that is entitled to protection under the Trademark Act of this country. Although these goods are to be exported from the territory of the ROC, such instances shall still be deemed a use of the registered trademark in the ROC.

The use of a trademark means that the trademark right holder uses the registered trademark for identifying the source of the goods/services it represents. Objectively, the manner of use shall adequately allow consumers to recognize the trademark and to distinguish the goods/services from those offered by others. The manner of use may refer to the following:

Labeling a two-dimensional graphic on goods or their packaging or containers or on stickers, manuals, price lists, or product catalogues or other articles such as business articles or documents in connection with services to be provided (including paper napkins, name cards and price lists of restaurants), or using a two-dimensional graphic in connection with newspaper, periodical and magazine advertisements.

Promoting the goods or services offered under a certain trademark through digital audio-video or electronic media such as TV, radio, electronic signboard, TV wall, electromagnetic recording or Internet.

Other media that may identify the source of goods/services, for example, posters on the externals of buses and moving publicity vehicles.

The proof of use furnished shall be capable of establishing the genuine use of the trademark in accordance with general commercial practices.

Yes. If a trademark right holder needs to use the registered trademark continuously, he/she may file an application for renewing the term of trademark rights six months before the expiration of the term. A term of ten years shall be provided for each successful renewal, and the term of renewal as approved shall commence from the date following the expiration of the last trademark term.

If the trademark right holder applies for renewal of the registered trademark to part of the designated goods or services, he/she shall delete the names of the goods or services that are not intended for renewal. For instance, if the designated goods originally include "Chinese medicines, western medicines and sanitary and medical supplements," the goods "Chinese medicines" shall be deleted therefrom if only the goods "western medicines, sanitary and medical supplements" are intended for renewal. However, if it is desired to amend the goods "sanitary and medical supplements" to "iced pillows, eyeshades and ear plugs," an application to reduce the designated goods shall be filed separately.

To prevent forfeiture of trademark rights from failing to apply for renewal, a trademark right holder is still entitled to file an application for renewal six months after the expiration of the term of trademark rights; however, the registration fee shall be doubled.

The assignment of trademark rights takes effect upon the conclusion of the assignment agreement stating the parties' unanimity, provided that the assignment of trademark rights shall have no locus standi against any third party if the assignment is not recorded with TIPO. Therefore, after being assigned a trademark, the assignee shall immediately apply with TIPO for recordation of the assignment. The prevailing Trademark Act has no associated trademark registration system. Thus, before being assigned trademark rights, a party shall particularly note if any identical or similar trademark is concurrently assigned and if the trademark to be assigned is prohibited from disposal or is involved with disputes, so as to protect his/her rights and interests.