[TW] What else to do after trademark registration?

July 14, 2018

Trademark Search

After the successful registration of a trademark, the neglect of management and maintenance may result in the loss of the exclusive right to use the trademark; therefore, the maintenance of the registered trademark is very important for the enterprise. After the registration of the trademark, the followings may happen:

1. Trademark owners need to change

In the event of trademark transfer, address change, etc., an application for change registration should be submitted to the Intellectual Property Bureau of the Ministry of Economic Affairs as soon as possible. If the company is a state-owned company, it should do its best to inform reliable trademark agency agents to handle the change registration as soon as possible. Failure to make timely registration changes may result in the trademark rights holders being unable to receive or even receive the relevant notices issued by the Bureau of Intellectual Property of the Ministry of Economic Affairs.

2. Registered trademark is challenged, assessed or abolished

According to the current Taiwan Trademark Law, after a trademark registration announcement, a third party may raise objections to, assess, and abolish different rights owners, the Intellectual Property Bureau of the Ministry of Economic Affairs will notify the trademark right holder after filing, and the trademark right holder must reply. The trademark right holder must reply the official, and is responsible for providing evidence of trademark use to support the validity of its registered trademark.
If the trademark right owner fails to produce a valid related issue within the prescribed time limit after the notification is issued, the Intellectual Property Bureau of the Ministry of Economic Affairs will revoke the registered trademark. Therefore, if the trademark right holder fails to make changes in a timely manner, such as trademark transfer, address change, and without monitoring any actions of others on the trademark right holder, he will encounter the situation that he has not received important notice from the Bureau of Intellectual Property of the Ministry of Economic Affairs, missed the best time to respond to the official and eventually led to the cancellation of the registered trademark.

3. Extension of trademark registration

Trademark registration is valid for a period of ten years (from the date of registration announcement). When the ten year expires, it can be applied for extension for a period of ten years with an unlimited number of renewal periods. So in theory, a registered trademark can always be effective. However, if you forget the trademark expiry date and do not apply for extension, it may cause the registered trademark to automatically expire and cannot be saved.

4. Trademark monitoring

After the trademark registration, in order to safeguard the rights and interests of the trademark, it is very important to control the similar trademark. Sometimes, the examiner may enter into the announcement under the review condition that there is no similar trademark; therefore, the monitoring of the announcement trademark can notify the trademark right holders and raise objections, and achieved the important purpose of safeguarding trademark rights.
In view of the above, the trademark registrant may, in addition to managing the registered trademark by himself, also entrust a professional and reliable trademark agency to manage the registered trademark on his behalf in order to save trouble and concentrate on the market business.