Is it accepted to designate “cake shop” as a service term in terms of Taiwanese trademark application?
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.
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.
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.
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.
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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.
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.
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