[TW] Can I not register the trademark receiving a trademark opposition statement?

July 14, 2018

register trademark Taiwan

When our meticulous trademark application was approved by the Intellectual Property Office, but we receive an official letter shortly after we received the certificate, informing us that the trademark has been challenged by others, and we are requested to reply within a specified period. At such moment, we would feel very helpless.

According to the reviewing criteria in Taiwan, any person may apply to the Intellectual Property Office for objection within 3 months after the date of the registration announcement, if the published trademark may infringe upon his rights.

Trademark disputes may generally have the following situations:

1. Prior Trademark:
The prior trademark owner (opposing person) thinks that the goods or services specified by the announced trademark are similar to those of the opponent, which may cause confusion and misrecognition to the general consumer, and believe that the trademark and the opponent’s trademark in the announcement belong to the same or related company. Therefore, the opponent will oppose with this reason.

2. Malicious Cybersquatting
The person who has trademark(s) registered and has doubts about the trademark in the announcement, because of the related trademark, disputes, business contacts, or other relations between the trademark and the trademark right holder in doubts etc., may be aware of the existence of the trademark. Therefore, the announced trademark is maliciously applied or preemptively registered, for instances, the trademark right holder of the case was informed that the downstream manufacturer is applying the same or similar trademark as the prior trademark owner. However, the trademark right holder was informed by the customer that the downstream manufacturer applied for the same or similar trademark as the trademark owner of the case, and also sold the related product. At this time, the trademark right holder in the case may raise an objection and attach relevant evidence to prove that the trademark in the announcement has a certain relationship with the opponent and may extinguish the trademark right.

The above situation is to judge the reason of trademark being in dispute and how to defend their own trademark rights by raising objection, how to operate in the actual defence. At this moment, you can seek experienced intellectual property companies to help you solve the problem.