- Whether FDA application documents can be served as Evidence of Use, if an US trademark application being filed on the basis of intend-to-use, when it is time to submit use evidence?
An US trademark application filed on the basis of Intend to Use, the applicant shall submit Evidence of Actual Use of the trademark. Actual Use means the bona fide use of a mark in the ordinary course of trade (Use in Commerce), that is the goods are sold or transported in commerce and that the mark is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale. Accordingly, an application document to FDA for applying the import of pharmaceutical products can not be deemed as use in commerce, and can not be served as use evidence.
- What is the difference between black-white mark and color mark when filing a new trademark application？
In principle, trademark representation for filing a trademark application shall base on the pattern which is used or intent to use. If the color of a trademark representation will be changed when it is actually used, and it is filed in black-and-white or single color, generally, it can still be deemed as using the registered trademark as long as the main distinct character is not virtually changed. When an applied trademark representation is a combination of colors more than two and the colors are the main distinct character, it can not be deemed as using the registered trademark, if the trademark is actually used in black-white color or other different colors. Because base on the common sence of the society and the recognition of consumers, it may already change the image of consumers that distinguishes the source of the goods.
- For an US trademark application, can applicant file a response on his/her own, if it was filed by an attorney？
If an applicant or registrant is represented by a qualified practitioner, the USPTO will conduct business only with the practitioner, unless that representation is terminated. (Referrence: TMEP §601.02)
- How do applicants define the scope of goods and services when filing a trademark application?
Most countries stipulate that applicants are obliged to constantly use their trademarks in the market when their trademarks have been registered; therefore, trademarks can be revoked by the Office or the third party for non-use for a certain period of time. Applicants are recommended to designate goods or services which they have already been used or they are intent to use.
- Special attention which should be paid to the claim of exhibition priority in Taiwan.
As to the claim of exhibition priority, it must be an international exhibition held and recognized by the governmnet, where the filing date can be traced back to the exhibition priority date, which is likely to influence others' trademark rights. In practice, whether an international exhibition qualifies in terms of the claim of exhibition priority depends on if it is "international" and "public"; moreover, applicants should be able to provide a certificate to indicate that the goods and services designated in the trademark appication were displayed in the exhibition. It is recommanded that applicants could seek advice from us before the filing of the trademark appication in order to succesfully claim the exhibition priority.
- When the official deadline of a trademark (application) case in Taiwan happens to fall on a national holiday, can it be postponed?
As the Trademark Act has no specific rules on official deadline, the Civil Code applies in this case; that is to say, the official deadline can be postponed to the next working day when it falls on a national holiday.
- What is "Trademark Coexistence" ?
Coexistence means a situation where two (2) or more identical or confusingly similar tradmarks owned by different trademark owners exist concurrently. It can also refer either to the coexistence indicated in the register of Intellectual Property Office, or to the fact that trademark owners are using similar or identical trademarks at the same time in the market.
- When a change of address is recorded simultaneously with a trademark renewal in Taiwan, is it necessary to provide a certificate to prove the change of address?
If a change of address is necessary when filing a renewal, applicants can simply update their information with the new addresses upon the filing of a renewal. There is no need to provide a certificate to prove the change of address.
- Extra attention which should be paid upon receipt of the amendment notice of goods and services for a trademark application in China.
There is only one chance to respond to the official amendment notice in China. Therefore, amendments to goods and services should be based on official requirements. Where the good and service terms do not use the officially accepted wording, a detailed description of goods and services should be provided; however, the application risks being rejected.
- How long is the publication term after approval for the Canadian Trademark application? Is it extenable?
After the Approval Notice being issued, there are two month publication time for opposition. Any third party may file an extension for three month without obtaining the applicant's consent. After that, a cooling-off period for extending the foresaid extension is available for nine months more with applicant's consent. Therefore, the whole publication for opposition might be as long as fourteen month in total.
- What is ""Seniority"" ?
An applicant of a EU trademark (EUTM) who holds a prior identical national trademark registration with identical goods and services in any EU Member State may claim the seniority of that mark with the EUIPO within 2 months of its filing or any time after registration of the EUTM. When the EUTM, for which the seniority has been claimed, is granted, the EUTM protection in the relevant EU Member State may be traced back to the date of the earlier national registration.
- Trade mark、"trademark" and "trade-mark", which one is the correct term?
These three terms are all correct and the difference is as below: “trade mark” is typically British spelling and is used commonly in EU countries and British Commonwealth of Nations (such as: United Kingdom, Australia, New Zealand, Singapore, South Africa, Brunei); “trademark” is used in America and by WIPO; “trade-mark” is the spelling used in Canada. However, these terms are nowadays widely accepted in various countries and used interchangeably in many occasions.
- Does USPTO usually issue Official Action(s) to the trademark registration(s) upon filing the Declaration of Use?
Yes. The United States Patent and Trademark Office (USPTO) started the Post Registration Proof of Use Audit Program in November 2017. The USPTO randomly selected 500 trademark registrations for which owners filed six-year declarations of use. They audited these registrations by issuing Official Action(s) requiring the owners to submit proof of use for at least two additional goods or services per class. If a response does not include acceptable proof of use for, or merely deletes the audited goods or services, the USPTO will issue a second office action requiring proof of use for all of the remaining goods or services in the registration.
- I found someone had filed applications of similar marks of my trademarks in other country, and now those applications are published for opposition. I'm not going to enter that country's market in the future. But there are other countries' global trademark layout considerations. Should I filed oppositions against those trademark applications?
If you do not own any prior trademark and do not use your mark in commerce before those applications in that country, the probabilities of success in oppositions are not so optimistic. If you do not intend to enter the country's market in the future, the trademark owner of this country only use their marks in the country, which will do less harmful to your rights. Therefore, as far as the current situation is concerned, we do not suggest filing oppositions against those applications. However, there are considerations for the global trademark layout for your marks. If that trademark owner preempts applications in your target countries, it will become an obstacle when you apply in those target countries. Or, when your trademarks grow well-known in the future, customers may mistake those marks between yours. As a result, we strongly suggest filing applications early in your target country, and pay close attention to the future actions of that mark owner. In addition, please keep the specimens and ""date"" of use of your trademarks as completely as possible. They will be strong evidences in the trademark controversial procedures if they can be proved that the dates of use are earlier than your opponent's marks.
- Can a registered word trademark extend its protection to a stylized mark of the same words？
As consumers will recognize the source of the goods or services by connecting a trademark with the goods or services only through the actual use of a trademark, there are limitations for use of trademark after its regiatration. According to the regulation of Taiwan Intellectual Property Office, the fonts of a word mark can be change and, for example from Arial to Century, still be deemed as the same mark. However, if a registered mark is a word mark, but the mark actually used is stylized, the registered mark will be deemed as non-use, because the characters that consumers recognize are different. To sum up, the protection of a registered word mark can not extend to the stylized mark of the same words.
- What are advantages and disadvantages when a trademark in China is partially rejected?
Advantages: Non-rejected goods/services can be published right after preliminary review. If no opposition is filed during the opposition period, the Office will directly issue the trademark registration certificate instead of proceeding the same upon the completion of the review. Disadvantages: Combined trademark does not exist in the trademark system in China. If the rejected goods/services are approved afterwards, that will require more costs to maintain the trademarks.
- What if the good/service terms to be filed in a new application are not identical to those indicated in priority document when priority right is claimed for a trademark in Taiwan?
In principal, the good/service terms to be filed shall be identical to those indicated in priority document when priority right is claimed. Where the good/service terms to be filed are the limited version of those indicated in priority document, the Office may accept it with legitimate reasons. Where the good/service terms to be filed are not identical to or more than those indicated in priority document, the Office may reject the claim of priority.
- Where a trademark application with human image is filed in Taiwan, it is possible to receive an official notice requesting agreement by the person entitled to the image right for entering the phase of registration. How to deal with this situation?
1. Where it is the applicant's image, it is obliged to explain the same to the Office and enclose photos as certificates. 2. Where it is another person's image, it is obliged to submit letter of consent by the person entitled to the image right and photos as certificates. 3. Where the person entitled to the image right has already passed away, it is obliged to explain the same to the Office, due to the fact that protection of image right belongs to personality right which begins at birth and ends at death; therefore, the image right in this case is invalid. 4. Where it is an invented human image instead of another person's image, it is obliged to explain the same to the Office; therefore, the image right-related regulations are not applied in this case.
- My company's director and president are the same person, which is me. Can I assign the company's registered Taiwan trademark to myself?
According to the Company Act, the signatory who signs the documents on behalf of the assignee cannot be the same person as the assignor. Therefore, in this case, the company cannot assign the trademark to the president. However, if another director/shareholder is added to the company to sign the document on behalf of the company, it would be allowable to assign to the representative of the company.
- If the assignor and the assignee are foreign companies, but the company representatives of the both sides are the same person, can it be allowed to assign the trademark in Taiwan?
If the assignor and the assignee are not Taiwanese company, they are not subject to the Company Act of Taiwan. The person who represents both assignor and the assignee can sign the assignment documents on behalf of both companies.
- Regarding the trademark application(s) in a country of the Association of Southeast Asian Nations (ASEAN)，for example, if a Malaysian trademark application is granted, will it be in favor of the allowance of Indonesian and Vietnamese trademark application for the same trademark?
Because Trademark is in accordance with territorial principle, a trademark is registered in Malaysia, a country of ASEAN, will not necessarily be in favor of the allowance of trademark applications in Indonesia and Vietnam.
- If a cited mark in China has expired, is it possible to argue that the cited mark has been invalid when filing a response?
There is a 6-month grace period from the expiration date of the trademark in China. According to Trademark law in China, a trademark shall not be granted within one year after another identical or similar trademark is removed, declared invalid or cancelled. As a result, trademark application applicants shall not argue that cited trademarks are not obstacles to their trademark applications anymore, until owners of said cited marks fail to file a renewal within six months from the day following the date of expiry of the period of the trademark right and said cited marks have been invalid for more than one year as well. In practice, in China, trademark application applicants may mention the above situation and ask examiners not to exam their trademarks, until the protection term of said cited marks expire, when filing a response.
- If a cited mark in Taiwan has expired, is it possible to argue that the cited mark has been invalid when filing a response?
According to Trademark Act in Taiwan, a request for trademark renewal may be made within six months from the day following the date of expiry of the period of the trademark right, but together with the fee paid in double. Therefore, trademark application applicants shall not argue that cited trademarks have been invalid, until owners of cited marks fail to file a renewal within six months from the day following the date of expiry of the period of the trademark right.
- If my trademark has been filed by trademark squatters in Taiwan, what shall I do?
In terms of trademark squatting, there is a specific regulation in Taiwanese Trademark Act, based on which you may argue that trademark squatters filed your trademark, due to the fact that they had been aware of the existence of your earlier used trademark due to contractual, regional, or business connections, or any other reason, so the trademark shall not be granted, in order to ensure your trademark right.
- How long is the cooling-off period in respect of a European Union trademark (EUTM) application?
When a EUTM application is opposed by a third-party and the opposition is later held to be admissible by the Office, a two-month cooling-off period will be granted to the two parties involved for finding an amicable solution. Within this period of time, the cooling-off period can be extended if the two parties agree. According to Office’s practice, all requests for extension of the cooling-off period are automatically granted 22 months, namely 24 months in total, regardless of the period requested by the parties.
- What is the main difference between the US filing basis of Use in Commerce and Intent to Use?
The US filing basis of Use in Commerce is based on Section 1(a) while the US filing basis of Intent to Use is based on Section 1(b) of the US Trademark Law. The required “Statement of USE declaration” and the “Specimens” shall be submitted to the USPTO at the time of filing for the cases based on Section 1(a) while the same requirements shall be submitted within 6 months from a Notice of Allowance is issued for the cases based on Section 1(b). This due date could be extended for five times, and 6 months for each time. After all, the examination system of US Trademark is based on “USED.” Therefore, “Use in Commerce” is one of the important conditions for a trademark to be registered in the US.
- When a registered mark in Taiwan expired, shall an application of trademark which is similar to the registered mark and filed within one year from the expiry date of said registered mark be rejected?
Where a registered trademark in Taiwan expired, there is no restriction that an application of trademark which is similar to the registered mark and filed within one year from the expiry date of said registered mark shall be rejected. However, if the expired mark is used continuously and there is evidence to prove that the similar mark is filed based on what is defined in Section 12, Article 30 of Trademark Act, namely being aware of the existence of the earlier registered mark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, and further having the intent to imitate the earlier registered mark to file the application for registration, the application of said similar mark may not be granted.
- What is the Notice of Reservation of Decision in the trademark application in Korea?
Where a trademark application in Korea is rejected based on a prior-filed mark, after the applicant files the response, KIPO would issue a Notice of Reservation of Decision, if the examination of said cited mark has not come out. In the Notice of Reservation of Decision, the Examiner notes that the decision on the subject application is reserved, as the result of examination of said cited mark has not been concluded. In this regard, once the result of examination for said cited mark is finally conclusive, the examination of the subject application will be resumed.
- If a Chinese trademark application is filed by my subsidiary company, will my prior trademark registration be a barrier? What can my company do to make the said new application be registered smoothly?
If the new trademark filed by a subsidiary company is similar/identical to that of the parent company, then the trademark registration of the parent company will be a barrier as it is prior registration. According to Trademark practice in China, under examination stage, the Examiner will not accept a Letter of Consent to allow the similar trademarks to be co-existed in Register and will issue an Official Action to reject the new application by citing the registration of the parent company. However, under the re-examination stage, the conflict trademarks can sign a Letter of Consent and after the Trademark Review and Adjudication approved, then can be co-existed legally.
- If receving an official refusal action of a Chinese trademark application, can I consider other trademark strategies at the same time besides filing the response?
If there is a cited trademark and it has been registered for more than three years, it can be canceled for not using a registered trademark for three consecutive years, and also filing a same new mark application at the same time. Filing a new application again is to prevent the failure of the examination result and the cancellation has not yet been reviewed. Therefore, if the new application is submitted too late, it may happen that the owner of the cited trademark has once again preempted us after knowing that somebody is trying to withdraw its trademark, and formed new obstacles. Therefore, the most common practice is filing the cancelation and a new case at the same time. However, it should be noted that since there is still an official examination timeframe issue, the result of the examination for the new application may also come up earlier than the cancelation. At that time, although the examination of the new case may be requested to suspend and waiting for the result of the cancelation, the committees still have their discretion to accept the request or not.
- If an US trademark application is allowed but the applicant has yet to file SOU (Statement of Use), can the application be transferred?
If an application was filed on the basis of Intend to Use, the applicant cannot transfer the application to other people before filing SOU.
- Time point for DAU (Declaration of Use) submission for Philippine trademarks.
Based on the requirement by IPOPHL, a Declaration of Actual Use (DAU) is to be submitted according to the following schedule to maintain your trademark: 1. Within three years from the filing of the trademark application; 2. Within one year from the fifth anniversary of the registration of the mark; and 3. Within one year from the fifth anniversary of each renewal. 4. For registered marks due for renewal on 01 January 2017 and onwards, a DAU must be submitted for renewed registrations within one year from the date of renewal of the registration.
- Is trademark coexistence allowed in China?
In practice, whether trademark coexistence is allowed depends on relationship between trademark owners. That is to say, similar marks can coexist when the correspondent trademark owners have relationship.
- What are the major Trademarks legislative changes in Canada enforced started from June 17, 2019?
1. The trademark term has been shorten from 15 years to 10 years. 2. The Nice Classification shall be used and applied onto the Trademark applications in Canada. And the official fee shall be paid by the number of classes. 3. The filing basis of “use” has been canceled. A mark which has never been used may be applied for registration in Canada.
- How long is the publication term after approval for the US Trademark application? Is it extendable?
All applications carry a 30-day opposition period. Extension requests can be made for 90 days (accompanied with proper reasons) or for a 30-day extension (without any reason) followed by a 60-day extension (accompanied with proper reasons). After this 90-day extension, there is a final 60-day extension available (accompanied with proper reasons and also shall be agreed upon by the applicant of the US trademark). Therefore, the longest extension is 180 days in total.
- What is the Official Notification confirming the list of goods/services in the trademark application in Ukraine?
When the Ukrainian Patent and Trademark Office confirms the list of goods and/or services as filed is in the conformity with the local requirements, they issue a Notification thereof. It should be noted that: 1) the Notification is not Notice of Grant, since the application will further undergo examination based on relative grounds (if there is any prior-filed/registered mark ). 2) The Examiner could change wordings of terms of designated goods/services; as a result, it is recommended that the notification needs to be reviewed and verified. If there is any amendment made by the Examiner and the applicant does not agree with the examiner's version of goods/services, it is possible to file an amendment. In such case, the applicant should explain his disagreement with the examiner's version and provide his/her version.
- Is it necessary to record trademark licensing with the Office in Taiwan?
In principal, a licensing contract enters into effect upon signature of trademark owner and licensee. However, it is necessary to record trademark licensing with the Office in order to avoid the third party's challenge.
- Can applicant sell the designated goods after his Canadian application was opposed？
Goods bearing the subject mark have been continuously sold to Canada before the application was filed and if the application was opposed during publication period by a third party, the third party can bar the goods of the application from selling to Canada by, even though the opposition procedure has yet to come to a conclusion, asking the Customs to perform a seizure or claim infringement caused by the selling of applicant's products or filing other litigation procedure. These are the risks that a trademark applicant may encounter.
- The considerations for applying US trademarks in classes 09 and 42
Many applicants misunderstood the classification of trademarks by class 09 as hardware and class 42 as software. In fact, both hardware and software belong to class 09 as ""goods"", while class 42 refers to the part of the ""providing service for others"" that the applicant sells. For example, the US trademark application requires the evidences of use. Usually, applicants who manufactures software are less likely to come up with the evidence of class 42. Therefore, it is possible to consider applying only class 09. Even if there are competitors who file similar trademark applications in class 42, the examiner may not allow registration because the business scope is too close. Thus there will also be certain protection. Unless the applicant plans to expand the business and sell the ""service"" in the future, it might be necessary to consider the need to apply in class 42. It is also possible to file a application of class 42 as ""intend to use"", and to complete the actual operation of the service in the next several years, and to present relevant evidence of use before the certificate issueed. However, if the evidence of use is still unavailable at that time, the application will not be certified.
- When receving an Official Action in the process of trademark application, which requires to disclaim certain wording in my mark drawing, should I obey the official requirements?
In the process of trademark application, if disclaiming the exclusive right of part of the wordings in the trademark drawing, the use of the wordings by other third parties or competitors does not constitute infringement, and the applicant cannot claim rights against them. But in the same situation, the examiner should not allow other applicants to use the wordings, so other competitors cannot claim rights against the same words. That is, the applicant cannot prohibit the use of the wordings by other third parties or competitors, but there is still no problem in using it ourselves. In addition, the examiner usually asks to disclaim the exclusive right to use the ""text"" part, the trademark drawing as a whole is still within the scope of protection. Therefore, if someone else uses a similar pattern in the future, it is still possible to claim your trademark right for the part of the drawing. In summary, in most cases, we suggest directly follow the examiner's requirements and disclaim the wordings, which is the easiest and most acceptable way to let your mark be registered.
- Does the issuance of Official Notification confirming the list of goods/services imply that the involed trademark has been granted in the trademark application in Russia?
When the Russian Patent Office (Rospatent) confirms the list of goods and/or services as filed is in the conformity with the local requirements, they issue Notification thereof. It should be noted that the Notification is not Notice of Grant, since the application will further undergo examination based on relative grounds (if there is any prior-filed/registered mark ).
- Is it mandatory to hire a US trademark attorney for a foreigner filing of US trademarks?
The United States Patent and Trademark Office (USPTO) announced a new rule which will take effective from August 3, 2019 requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States.
- Is it applicable to file US trademark applications via Fax or Paper submission?
The USPTO has published a new rule in the Federal Register requiring electronic filing for trademark submissions. This rule becomes effective on October 5, 2019. Trademark applicants and registrants will be required to file online using the USPTO's Trademark Electronic Application System (TEAS). Applicants and registrants will need to provide and maintain an accurate email address for receiving correspondence from the USPTO. Paper and fax submissions will no longer be accepted.
- What can one benefit from recording his IPR with GACC(General Administration of China Customs)?
In China, trademark owners can record their marks with customs. After the recordal is completed, in case of suspected infringing goods identified while being about to be imported in/exported out from China, trademark owners may file IP protection request with customs where the goods are imported in/exported. After having paid a security deposit in the same amount of value as list price of the import goods or FOB price of the export goods, applicants are able to ask customs to detain suspected infringing goods in order to protect their trademark right.
- Can popular slangs be registered as trademark?
Popular slangs could easily trigger consumers’ resonance, but can be rejected by the Trademark Office during the examination. In practice, the examiner considers that consumers see popular slangs only as trendy concept. Consumers do not regard them as a sign to indicate and distinguish the origin of goods/services. That is to say, popular slangs are not distinctive, so they can be rejected during the examination.
- Special attention which should be paid to the claim of color in Finnish trademark application.
In the amendment of Finnish Trademark Act approved on 1 May 2019, black and white marks will no longer be considered to cover all color variations. The new law is not retroactive, hence black and white trademarks already registered will still cover all color variations. As a result, we recommend that applicants should file new trademark applications with colors which will actually be used later on.
- During the examination procedure of a trademark application in Ethiopia, if the Trademark Office cites a similar mark under the same Class as the subject mark, can it be overcome by deleting the conflicting goods/services included in the Class?
Under the Ethiopian IP law, the protection of a trademark is for the whole class, instead of for goods/services, so omitting the confusing goods/services do not change the fact that goods/services of the two cases are similar; therefore, all we can do is to abandon the whole conflicting Class.
- Upon the completion of a Korean trademark assignment, will KIPO issue an assignment certificate?
KIPO does not issue a Certificate for the assignment, they issue a notice of recordation completion.
- Is divisional trademark application (registration) available in Brazil?
According to the INPI Resolution no. 244/2019 which will enter into force on 2 October 2019, the division of an application/registration may take place in two situations: (i) when the examination of an application is suspended in one of the classes claimed (in a multi-class system), and (ii) for purposes of transfer of ownership of the application/registration.
- What are the reduction rules for the trademark official fees of Philippines?
- Is it required to list the designated class(es) and its good(s)/service(s) when filing a business emblem in Korea?
Nice classification is not applicable to business emblem, but the designated business needs to be defined within the business scope or purpose.
- Is official trademark search available in the Trademark Office in the United Arab Emirates (UAE) ?
Yes, but only identical search for word mark is applicable in the official trademark search of the UAE Trademark Office.
- Would there be marks which can not be found when a trademark search is conducted in Japan?
The Japanese Patent Office does not disclose information of newly-filed trademark applications for around 1-3 months from the filing date. Therefore, it is not able to find all applications filed within the latest 1-3 months from the date on which the search is conducted.
- Where the name of trademark owner changed, is it required to request a recording of a change in the name, when filing a trademark renewal in Taiwan?
When filing a trademark renewal, it is sufficient to provide a certificate showing the change of name, without requesting a recording of change and paying official fee for the recordal.
- Where a trademark drawing includes English alphabets, shall the form of the mark name, namely uppercase or lowercase letters, be consistent with that included in the drawing?
When a trademark drawing includes English alphabets, the form of the mark name shall be consistent with that included in the drawing. If there is any discrepancy, the Trademark Office is entitled to make an amendment to it directly.
- If an US trademark application receives a Cease & Decease Letter from a third party, can applicant not to respond?
It is advised that the better way is to respond to the Letter, although it may simply be a method to thread the applicant. In order to avoid the adversary to take next dispute action, such as opposition, law suit, … and etc., the response can be made by arguing the differences between trademarks, markets of the goods, … and etc.
- Would a registered Japanese trademark that had not been used for three years in a row or longer be cancelled through a trial in Japan?
Evevn if a registered trademark had not been used for three consecutive years or longer, the mark is not subject to the cancellation if it was used subsequently and the mark owner is able to prove the fact that the mark was used within three years before the resitration was granted.
- Where an Ethiopian trademark application is rejected by the Trademark Office citing a similar trademark in the same class, is the applicant able to overcome the rejection for keeping all the similar goods/services in the same class when filing a response by presenting a trademark coexistence agreement between the owner of the cited mark and them?
Based on the Ethiopian IP law, if the trademark owner of the cited trademark agrees on the coexistence of their mark and the applicant's, the applicant can keep all the goods/services in the same class.
- What extra attention should be paid when a recordation of change in address is to be filed for a Japanese mark?
1.Where several marks of the same owner to be filed with a recordation of change in address are still pending, a change of the applicant's address in the Applicant Code will suffice, which will also reflect in all pending applications of the same owner.
2.However, as to the registered marks of the same owner, requests for recordal of change in address shall be filed separately.
- Where a mark composed of English letters was rejected in Korea due to a previously filed similar mark, it is possible to raise the chance of being granted registration by filing a new trademark application with Korean letter string transliterated from the English one?
The chance of being granted registration would be low by filing such a new application. The languages for the two applications are different, namely English and Korean one. As long as the pronunciations of the main parts are identical, the examiner would reject the application by citing the previously filed mark cited in the previous application.
- Can signature be replaced with sealing for power of attorney (POA) for Japanese trademark affairs?
No, the POA shall be signed instead of putting a seal onto it; either English or Chinese name can be signed.
Is it accepted to designate “cake shop” as a service term in terms of Taiwanese trademark application?
In practice, it is not easy to define “cake shop” as a term for selling goods or a term for providing service. The examiner would require applicants to specify the term, for example“cake” in Class 30 or “cake snack bar” and “cake and catering service” in Class 43. However, every examiner has different examination standard. It is recommended to file a trademark application with good/service terms suggested by the Office.
- Where a mark is filed with recordation of change in name or address after being published after preliminary review but before being registered in China, will the Trademark Office therefore issue a certificate to prove the change?
Where a mark is filed with recordation of change in name or address after being published after preliminary review but before being registered in China, the Trademark Office would issue a certificate to prove the change. However, it takes different examiners different amounts of time to complete the examination, which will result in the below two situations:
(1) If a change certificate is issued more early than a registration certificate, the registration certificate bears new name and address.
(2) If a registration certificate is issued early than a change certificate, the registration certificate bears old name and address. The change will be considered completed upon the issuance of a change certificate.
I have licensed other person to us my trademark and the said person puts my trademark on the goods, can this be deemed as my use of trademark？
If a trademark is licensed to other person, one shall provide relevant license documents, on which shows the licensor, licensee, the trademark, goods/services, and period of license, and also prove that the licensee has use the trademark.
If my trademark contains wordings that are descriptive, shall I have to disclaim the exclusive right to use the wordings when filing the application?
According to Article 29 (1) of Trademark Act, if a mark describes the nature, function …, and etc. of the goods, it cannot be registered. And according to Article 29 (3) of Trademark Act, if a mark contains an element that are not distinctive and could give rise to doubts as to the scope of the trademark rights, the applicant shall disclaim the exclusive right to such element.
When an descriptive element of a trademark is often used by the same industry and publics to describe the designated goods or services, it cannot be used exclusively and no need to make a disclaimer. However, if the descriptive element is rarely used by the same industry and the publics to describe the goods or services, and it is not clear whether the owner has the exclusive rights to the element, then the owner shall disclaim the exclusive right.
Can I use lower case letter, if my Taiwanese trademark application was filed and registered in all capital letters？
When a registered Trademark is in all capital letters and the use of the lower case letters of the registered Trademark will be deemed as equivalent, thus the registrant does use the registered trademark. It is not vulnerable to cancellation based on non-use.
- What is the difference between a fast track examination and a normal examination carried out for a Japanese trademark application?
The Japan Patent Office (JPO) has conducted a fast track examination for Japanese trademark applications since this year. Trademark applications filed in Japan on or after February 1, 2020 in which goods/services are chosen from the standard goods/services listed in the JPO website are applied to the fast track examination. The examination of the fast track examination takes only around six months, in comparison with the normal examination which takes 12 months. The fast track examination saves half of the time.
- Is there any regulation on the reduction of official fee which applies to trademark applications filed in Korea?
The official fee of a Korean trademark application is charged by class. In a new Korean trademark application, if all goods of one of the classes are chosen from the standard terms of the Korean Intellectual Property Office, said class can be entitled to reduction of official fee. while the other classes are charged based on the original rate.
- Would a registered European Union mark (EUTM) become invalid in the UK, as the United Kingdom (UK) departed the European Union (EU)?
The UK departed the EU on January 31, 2020 and the EU trademark law will continue to extend to the UK until the end of the transition period, December 31, 2020. When the transition period expires, the UKIPO will convert EUTMs registered by the end of the transition period to comparable UK trademarks automatically without charging any official fee.
- What are advantages for requesting a search advice and a preliminary advice with the New Zealand Intellectual Property Office before filing a trademark application in New Zealand?
The search advice informs whether a mark to be filed has already been used by others, while the preliminary advice informs whether a proposed mark is distinctive enough to serve as a trade mark in the industry. After receiving the results of the two reports, applicants can decide whether to file a trademark application with the mark or file a trademark application with the mark modified. If applicants file a trademark application based on the comments on the official reports within three months of the request of search advice and preliminary advice, the official fee for the new trademark application can be reduced.
- If the particulars of a registered United Arab Emirates trademark are missing, where can we retrive the information?
The United Arab Emirates Intellectual Property Office does not have a trademark database open to the public; however, it is possible to file a certified copy of registration certificate with the Office. The said certificate includes all details of the mark.
- If the particulars of a registered Iranian trademark are missing, where can we retrieve the information?
The Iran Intellectual Property Office does not have a trademark database open to the public; however, it is possible to file a search with the Office to locate the mark for the related information.
- Is it possible to file a British renewal and recordation of change in name/address simultaneously?
The UK Intellectual Property Office (UKIPO) issues a renewal certificate when the renewal is approved. In order to let the renewal certificate reflect the updated name/address, recordation of change in name/address will be filed first. The renewal will not be filed until the UKIPO updates the database.
- Where an Ukrainian trademark application is rejected by the Trademark Office citing a similar trademark in the same class, is the applicant able to overcome the rejection when filing a response by presenting a letter of consent provided by the owner of the cited mark or a trademark coexistence agreement signed between the owner of the cited mark and them?
Yes, but if the pending mark is very smiliar to the cited mark, a letter of consent and a trademark coexistence agreement are used only as additional argument. It is recommended to provide evidences to show that the date on which the applicant started to use the mark in Ukraine was earlier than those of the cited mark and the mark had also been used for a long time, proving that the mark has already gained distinctiveness in the territory of Ukraine.
- What is the difference between the requirement of a trademark application filed through the Madrid System and the European Union System?
As to the filing of a trademark application through the Madrid System, a Taiwanese applicant can file the application through China only. Because Taiwan is not a contracting state, which also indicates a fact that said applicant must have a trademark which "has already been filed and accepted for examination" or "granted registration" in China as a basic application or registration. The two situations are explained as follows:
(1) The trademark which has already been filed and accepted for examination is applied to the situation where the country of a basic application belongs to a contracting state of "Madrid Protocol."
(2)The trademark which has already been granted registration is applied to the situation where the country of a basic registration belongs to a contracting state of "Madrid Agreement."
※Remark: China is a contracting state which belongs to both "Madrid Agreement" and "Madrid Protocol".
When it comes to a trademark application in the European Union, anyone can file the application directly with the EUIPO; however, under the situation where an applicant has no domicile or legal business place in any EU member country, he or she needs to appoint a local agent to receive official letters.
- What is the difference between the examination system of a trademark application under the Madrid System and the European Union System?
Under the Madrid System, the designated Trademark Office of each contracting state must issue a refusal within 12 or 18 months during the national examination phase; if no refusal is issued within the 12 or 18 month time period, the mark will be deemed as being accepted for protection.
There is no substantive examination for a European Union trademark (EUTM) but an opposition system allowing trademark owners all over the Europe with marks which were filed/registered previously and are similar to new EUTMs to file an opposition. If no opposition is filed during the “publication period for opposition”, the mark will be granted registration which indicates a fact that the overall examination time takes half of the year only if no opposition is filed by any third party.
- What is the difference between the effectiveness of trademark right under the Madrid System and the European Union System?
A trademark filed under the Madrid System can extend its right to those designated countries only; while an EUTM covers 27 Member States.
- Will there be risk that an EUTM being cancelled when a third party changlleged said mark based on the fact that said mark is only used in Germany？
Use of the EUTM does not need to be in all countries of EU, however, it would be preferable to use the trademark in more than one country to be able to proove a serious use.
- Why is the filing date of an UKTM application converted from its corresponding EUTM application, after the brexit, different from that of said EUTM application?
According to the regulations of the UKIPO, the filing date of the pending EUTM can be retained for said UKTM applications after the brexit. However, in practice, the UKIPO is referring to the "parent" EUTM as a "priority" application. Therefore, the UKIPO refers the filing date of the EUTM as a priority date on their official documents, while the date in which the UKTM application is filed is regarded as the filing date of said UKTM application.
- Shall the losing party bear the fees incurred by the other party during the opposition proceedings in the UK?
According to the UK trademark Law , the losing party shall bear the costs incurred by the other side.
- When is the deadline for filing an opposition to a trademark application in Vietnam?
Under Law of Intellectual Property of Vietnam, there is no fixed deadline for filing opposition against a trademark application. Any third party has the right to oppose a trademark application before the substantive examination completes. Currently, such examination prolongs 14 – 16 months counting from its publication on the Gazette. However, in some cases, this procedure might be completed sooner upon the applicant's request. Therefore, if one wishes to file an opposition, it is advised to do so as soon as possible.
- What does it mean when the status of a trademark registration, "Registration Merged", is shown on the HKIPD's website?
When several trademark registrations of the same mark owned by the same registrant, they can applied for merger, and therefore, when the status of a trademark registration shows "Registration Merged" on official website, it means the registration is merged with other registrations into another registration.
- While filing a TW trademark application, if the trademark owner is a company limited by shares, can the person in charge, director or shareholder of the trademark owner act as the trademark agent to handle the relevant application?
No. If the person in charge, director or shareholder of the company limited by shares act as the trademark agent, such act will violate the principle of prohibiting self-delegation in Civil Law.
- While filing a TW trademark renewal application, if it is not sure whether the applicant's seal in the original application matches the seal in the renewal application, shall a Seal Recognition Statement be needed?
No. While examining a TW trademark renewal application, the office will not verify the seal in the original application. Instead, it will only examine the renewal application according to the seal in the application form.
- Where the applicant ID numbers of the Japanese trademarks which the one filed previously are different, shall the one merge the applicant ID numbers?
Where one's trademark to be filed is similar to those filed/registered by oneself previously, in order to avoid the examiner to cite said similar marks, it is advised to merge all of one's applicant ID numbers.
- Where a mark to be filed in Chile includes Chinese characters, shall the corresponding Spanish translation be provided?
According to the latest modifications to the examination criteria involved in Chilean Intellectual Property Law in 2021, when filing a trademark application featured in a foreign language other than Spanish, it is necessary to provide a translation of the requested sign into Spanish.
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- When is the deadline for filing an petition to revive an US trademark right, if a Statement of Use is not timely filed before the six-year due date?
In case the cancellation/expiration of an US trademark is not due to official error, the petition must be filed by not later than two months after the issue date of the cancellation/expiration notice. If the registrant did not receive the cancellation/expiration notice, or no notice was issued, the petition must be filed by not later than two months after the date of actual knowledge of the cancellation/expiration of the registration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired.
- Is it possible to file a Ukrainian trademark application with an image similar to the cross symbol of hospital?
The Ukrainian legislation contains the provision prohibiting registration of trademarks showing the emblems of the international intergovernmental organizations, such as cross symbol, based on which, the risk that the Examiner considered said image as imitation of the emblem of the Red Cross cannot be totally excluded. However, some trademarks with cross symbol were registered in Ukraine still. Trademark owners who have such image should weigh the pros and cons before the filing of application.
- After the Brexit, the European Union trademarks (EUTMs) which were registered by the end of 2020 will still protect trademark rights in the UK. In this regard, is it possible to request a registration certificate of the UK trademark registration converted from said EUTM before the UK Intellectual Property Office (UKIPO)?
Yes. Upon payment of official fees to the UKIPO, a UK trademark certificate will be issued.
- What special attention should a Taiwanese individual/company pay to document legalization for a Mauritius trademark application?
Power of attorney (POA) for a Mauritius trademark application should be legalized in a Mauritius Consulate. Besides, POA legalized in a British Consulate or by means of Hague Apostille are acceptable as well. However, there is no Mauritius Consulate in Taiwan. Also, the British Office in Taipei does not offer services of document legalization. Taiwan is not a signatory to the Hague Service Convention. Therefore, in practice, said documents would be legalized either in a Mauritius Consulate abroad through foreign agents or by means of Hague Apostille in Hong Kong.
- Can a trademark renewal application in Taiwan be filed first and then the power of attorney be supplemented later? Are there any additional official fees?
The power of attorney can be submitted later without additional official fees. After the filing document is received, the examiner will notify the trademark agent to supplement the power of attorney within one month.
- When a trademark renewal application is filed first before the official deadline, the power of attorney or other supporting documents shall be supplemented later. If the original renewal deadline has expired when the aforementioned late supplemented documents are filed, will there be any late renewal fees?
As long as the trademark renewal application is filed before the official deadline and the payment of the official fee is completed, in principle, the Official will determine that the case was filed before the renewal deadline, so no late renewal fees will be incurred.
- What is Expungement proceeding?
Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services.
Time limit. This proceeding must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.
- What is Reexamination proceeding?
Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.
When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.
When the underlying application was filed with an intent-to-use basis, the relevant date is the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.
Time limit. This new procedure must be requested within the first five years after registration.
Any goods or services that are cancelled as a result of these proceedings will no longer be covered by the trademark registration.
- Is there a fast track mechanism in Russian trademark system?
Yes, but it is necessary to request a fast track procedure at the filing of trademark application. With this procedure, an overall term of examination is shortened from 12 months (current maximum term) to 3 months.
- What should I do if I want to apply for a word trademark in traditional Chinese characters in Japan, but there is no corresponding Japanese kanji?
Traditional Chinese characters must be made into a format of graphic specimen to file a trademark application. Moreover, after the registration is approved, the font can still be changed while using the mark.
- Is there any limitation on the number of designated goods or services in a Japanese trademark application?
Nomally, Japan Patent Office does not limit the amount of designated goods or services. However, it regulates that if the designated goods or services in one class that contains more than 23 "similar group codes", the applicant will be requested to sumit documents certifying the use or intention of use of the trademark.