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Regarding Changes to Registered Trademark
05.25.2021

According to practical experiences, there will always be relevant degree of layout and planning within the anticipated period of trademark application. Notwithstanding, as an old time saying of the Chinese goes: “Planning is always playing a perpetual game of catch up with changes”. As a result, the Taiwan Intellectual Property Office proposed corresponding procedures that targets some unpreventable matters, as well as matters that must be changed. Through these proposed corresponding procedures, it wishes to make certain trademark registrants receive more trademark protection in law. Changes that can and cannot be made to registered trademarks are as follows:

Changes that can be made:
1. Trademark Owner
2. Address of the Trademark Owner
3. Deletion of Goods/Services
4. Forfeiture of Trademark

Changes that cannot be made:
1. Trademarked image
2. Addition of Goods/Services

Above-mentioned are the frequently asked questions in relation to changes registered trademarks. It is important to highlight no changes can be made in relation to the trademarked image, as well as to the changes of any goods/services to the original trademark; unless there is an extraordinary reason for the change, subject to the supervising body and members’ approval. In relation to part on the goods/ services, registered marks can only delete items that they no longer need and those non-controversial items. However, no goods/services can be added so as to ensure fair competition in the market and to prevent the abuse of trademark rights.

In all fairness, so long as changes are made within a reasonable limit, they can be accepted by the officers; the change in trademark owners can be done through the transfer process, while the change in address can be completed after filing in the corresponding form and paying the fees due. Despite stipulating the change in trademark owners and addresses are acceptable, with regards to the Taiwan Intellectual Property Office’s measures and policies, in principle, based on practical experiences, trademark owners will only change their addresses when extending their trademarks, and it is observed that businesses will only change their trademark owners when they are changing their business pathways or when they have other considerations. Certainly, deletion in goods/services can also made subjected to third parties’ objections. For those of you whose trademark rights have been negatively impacted or infringed, you can seek professional help from agents for further recommendations. Through professional analysis, it ensures your rights will not be interfered further.

Benny Kong & Tsai © 2021
 

Benny Kong & Tsai, Solicitors

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