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Scripting success of iconic Indian brands with IP

Transforming Indian culture, heritage and ingenuity into protectable, monetisable assets, 含羞草社区 most iconic brands set themselves apart from the rest. More than just businesses, they are symbols of 含羞草社区 creative strength, deeply rooted in tradition while confidently stepping into the future.

In this case study, the author analyses the threads of IP that strengthen the fabric of iconic Indian-origin brands.

TITAN: Engineering emotion and elegance

Tata Industries and TIDCO formed a joint venture to bring Titan Watches to market in 1984. Its advent was marked by an iconic advertising campaign by Ogilvy & Mather, where customers walked into stores with newspaper cuttings to buy watches.

Over the years, Titan has built a reputation for crafting timepieces that wed contemporary design with traditional values. Titan has a diverse range of brands, each meticulously crafted to cater to different consumer segments, while maintaining a cohesive brand identity.

• • Watches: The Titan brand has expanded to encompass various sub-brands such as Fastrack, Xylys, Zoop by Titan, Octane Titan, Raga by Titan, Nebula by Titan, Edge by Titan and Sonata.
  • Jewellery: Titan has conquered the art of brand diversification within the jewellery sector, with flagship Tanishq a hallmark of quality, Zoya representing luxury, CaratLane an omni-channel brand and Mia offering contemporary designs tailored for workwear.
  • Eyecare and Accessories: Titan also boasts a presence in eyecare and accessories.

Titan’s Raga Memoirs collection epitomises the brand’s creative storytelling, with timepieces inspired by childhood memories. Designs like Pinwheel Dreams, Toffee Twist, Candy Swirls and Ladybug Whispers are infused with emotional resonance, combining aesthetics with sentimental values.

Zoya’s Pezzo D’Arte collection, inspired by classical Italian monuments, transforms iconic architectural marvels into wearable art. Similarly, CaratLane pioneers the world’s first true 3D virtual jewellery try-on experience, with strategic use of colour synonymous with the colour purple. Other well-known marks including Tanishq highlight Titan’s ability to maintain and enforce its IP rights across various jurisdictions.

RELAXO: From Hawai Chappal to fashion-forward footwear. From a single product that has become an Indian household staple, Hawai Chappal, Relaxo has stretched its portfolio to more than 400 different types of shoes and slippers. The company has grown from a modest investment of just INR10,000 (USD117) to become a market leader today.

The original logo, which evokes nostalgic memories for many Indians, underwent a revamp to stay relevant to contemporary tastes.

Relaxo secured design protection for several parts and features of its footwear, including surface textures and sole designs, while exploiting the mark of its Sparx brand, establishing it as an integral part of its product identity.

In 2022, Relaxo also took legal action against Aqualite India for infringing its unique designs in the Bahamas range, and continues to quietly strengthen its intellectual property portfolio with a series of design registrations for its innovative footwear.

ESCORTS: Engineering an IP-driven legacy

Escorts Group is established in multiple sectors. A partnership with Ursus of Poland produces Escorts-branded tractors. The iconic Rajdoot motorcycle range was launched with another Polish manufacturer, Cekop. A joint venture with Ford Motor Co was instrumental in Escorts becoming the largest manufacturer of tractors in India, cementing its global presence.

In 2020, Escorts acquiring a stake in Japan’s Kubota Corporation, which has since increased to 44.8%. Escorts group is owned by Har Parsad & Company, named after the grandfather of the company’s managing director. The brand has also entered into licensing agreements with Escorts Kubota Ltd, which has preserved the legacy and ownership of the Escorts brand within the founder’s family.

MANISH MALHOTRA: Fashion as signature IP

The Manish Malhotra brand revolves around the designer himself, using the two-letter MM initials abbreviation in its corporate identity.

In 2021, Malhotra made a revolutionary move by launching a virtual store for his Delhi flagship, becoming the first Indian designer with a digital couture experience. Manish Malhotra’s brand has also mastered the art of leveraging licensing agreements, enabling growth into new markets while maintaining control over the core intellectual property.

Manish Malhotra took IP action in Pakistan in 2014 against a textile firm to defend his trademark, claiming cross-border reputation through global recognition, even when the mark at that time was not registered in Pakistan. The brand is a prime example of how intellectual property can be leveraged to build a global fashion empire.

HERO MOTOCORP:

Engineering brilliance, Protected. Hero MotoCorp utilises its logo as a symbol of movement, speed and forward-thinking innovation. The company’s tagline, “Hum Main Hai Hero” (“We have a Hero within us”), connects the brand with its everyday consumers.

The company has trademarked its “X” logos, which appear in the Xtreme, Xpulse and Xtreme 160R street bike models, known for their unique, protected design elements.

TCS: IP as the backbone of global digital leadership

Tata Consultancy Services (TCS), a flagship of the Tata Group, is the master brand representing the company’s identity in the global market. TCS has formed a variety of brand collaborations and strategic partnerships to enhance its offerings and drive innovation, including collaborations with Microsoft for Azure cloud platform, Google Cloud, IBM, Oracle and Cisco.

TCS promotes a co-innovation model where it collaborates with clients to develop and protect IP. Through joint development programmes, TCS helps clients protect their innovations which are co-owned or exclusively licensed. TCS has leveraged its IP assets to create new business models and revenue streams.

BABA: Legacy and innovation in a zarda wrap

The company started from a little shop in the humble lanes of Chandni Chowk market in Delhi popular for making the traditional Indian sweet rice dessert, zarda, commonly enjoyed at festivals, weddings and special occasions.

Over decades of consistent use, “BABA” transcended its etymological neutrality to become a symbol of sensory experiences encapsulated in the “House of BABA” marks such as BABA 120, BABA 600 Plus and BABA ONE. The protected association with black and gold packaging is not merely aesthetic but a critical branding element.

The company’s communication strategy includes the use of emotionally echoing taglines such as “Andaz Jo Rivaaz Ban Jaaye”, increasing consumer recall.

THE PARK Hotels: Curating experiences through IP

THE PARK’s IP lies in strategic locations of its hotel, restaurant or any other allied services making them unique and iconic, building goodwill by recognising those locations through its IP.

These include Flurys, the iconic Kolkata tearoom on Park Street founded by a Swiss expatriate couple and subsequently acquired by THE PARK.

In wellness and rejuvenation, the AURA Spa, featured across several properties, reflects the brand’s foray into the wellness industry.

The brand’s robust intellectual property portfolio and national recognition played a vital role last year when Apeejay Surrendra Park Hotels Limited (ASPHL), parent company of THE PARK Hotels, marked a significant milestone by going public through an initial public offering (IPO) that reinforced the market’s confidence in its legacy and growth strategy.

Taj & Indian Hotels: The soul of Indian hospitality

The Taj brand under The Indian Hotels Company Ltd (IHCL) created and introduced the novel concept and feeling of ‘罢补箩苍别蝉蝉’, protecting its unique experience including smell, touch, feel and taste. It can be experienced from the uniform Jasmine fragrance to signature dishes available across its hotel brands.

IHCL is the first in the country to protect the architectural image of the iconic Taj Mahal Palace hotel, Mumbai, as a trademark. Additionally, the artistic and structural blueprints of this heritage property are safeguarded under the Copyright Act and the Designs Act, 2000.

Its revival at the Gateway of India signals how legacy IP can be rejuvenated to meet modern market sensibilities while preserving historical brand value.

IHCL’s customer loyalty schemes such as the Taj InnerCircle programme and Epicure involve proprietary processes, branding and user data that are also protected under various IP laws.

Key takeaway

The strength of a brand lies not only in its public perception but also in the legal fortification of its unique attributes through intellectual property.

From evocative logos and distinctive designs to technological innovations and strategic brand extensions, each element plays a pivotal role in shaping a brand’s identity and competitive advantage.

These case studies underline how visionary branding combined with diligent IP protection and innovative consumer engagement can transform a name into a cultural and commercial legacy.

ANAND AND ANAND
B-41, Nizamuddin East,
New Delhi 110013, India
Tel: +91-11-49146400
Fax: +91-120-4243058
Email: email@anandandanand.com

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An analysis of trademark law in Indonesia

In Indonesia, the primary law on trademarks is Law No.20 of 2016 on Marks and Geographical Indications, known as the Trademark Law. The Trademark Law was updated through Law No.6, 2023 on the Enactment of Replacement Government Regulation in Lieu of Law No.2, 2022 on Job Creation as Law. Furthermore, several bylaws regulate more specific matters, including:

1. 1. Government Regulation No.28, 2019, concerning types and tariffs of non-tax state revenues applicable to the Ministry of Law and Human Rights, which sets the official fees for various actions that can be filed before the director general of intellectual property (DGIP) under the Ministry of Law and Human Rights;
   2. Government Regulation No.22, 2018, on the international registration of marks under the protocols relevant to the Madrid Agreement concerning the international registration of marks, which covers all aspects of international registration filed in or from Indonesia;
   3. Government Regulation No.90, 2019, concerning the Trademark Appeal Commission, established in 1995, concerning procedures for application, examination and settlement of appeals at the commission;
   4. The Ministry of Law and Human Rights Regulation No.12, 2021, on the amendment to Regulation No.67, 2016, concerning the Trademark Registration Decree of the director general of intellectual property in the field of trademarks. The ministerial regulation covers registration, classes of goods and services, and the rectification of issued certificates and records; and
   5. The Ministry of Law and Human Rights Regulation No.10, 2022, on the amendment to Regulation No.12, 2019, on geographical indications.

Scope of trademarks

The Trademark Law defines a mark as any sign capable of being represented graphically in the form of drawings, logos, names, words, letters, numerals, colour arrangements, two and/or three-dimensional shapes, sounds, holograms or a combination of two or more of these elements used to distinguish goods and/or services produced by a person or legal entity in trade.

It acknowledges two types of trademarks: traditional and non-traditional marks. Some marks cannot be registered due to their lack of inherent distinctiveness. These conditions are met if the marks:

1. 1. Are contrary to the state ideology, laws and regulations, religious morality, ethics or public order;
   2. Are identical to, related to or simply describe the goods and/or services for which registration is sought;
   3. Contain elements that could mislead the public about the origin, quality, type, size, variety or purpose of the goods and/or services for which registration is sought, or are the names of protected plant varieties for similar goods and/or services;
   4. Contain information that is not consistent with the quality, benefits or efficacy of the goods and/or services produced;
   5. Lack distinctive character;
   6. Are common names and/or symbols belonging to the public; or
   7. Contain functional forms.

Applying

The Trademark Law adopts a first-to-file principle. In general, any individual, organisation or company can file for trademark registration. However, the law also regulates trademark registrations that are filed in bad faith. Article 21 of the Trademark Law stipulates that an application is refused if it is submitted by an applicant in bad faith.

In practice, it is quite challenging to determine whether an application is filed in bad faith or not.

A bad-faith application that later matures into registration can always be invalidated at the Court of Commerce, as regulated under article 77 of the Trademark Law. This article stipulates that: “The lawsuit for invalidation may be filed at unlimited time if there is bad faith and/or the relevant mark contravenes the state ideology, laws and regulations, morality, religions, decency and public order”.

Filing

A trademark search is strongly suggested for anyone who wishes to file a trademark application in Indonesia. The search report will identify potential hazards and stumbling blocks to an otherwise successful registration process.

Assuming the search report gives an all-clear sign to proceed with the application process, the applicant will then need to supply the following:

1. 1. Name of applicant;
   2. Address;
   3. List of goods and services; and
   4. Representation of the mark to be filed, which can be in the form of a word mark, logo or non-traditional marks.

Once the information has been provided, the patent lawyer will prepare two documents to be signed by the client: a power of attorney and a statement of mark ownership.

Since 2019, e-filing has been the only acceptable method of filing in Indonesia.

Timeline

Assuming the application does not receive any opposition and provisional refusal, then it may take 10 to 13 months from filing to obtaining a registration number. This estimate is significantly faster than it used to be, when even a straightforward registration would take two to three years.

Opposing

Applications are published for two months only. During the publication period, any interested party may file for opposition. Their opposition will be considered during the substantive examination stage.

Once the publication period has lapsed, there are no other formal means of filing for opposition, including extension requests.

To successfully oppose an application, it is strongly recommended that the opposer has a valid legal standing – namely, an earlier trademark application or registration in Indonesia. Otherwise, the examiner will likely reject the opposition by citing the first-to-file principle.

Invalidations and cancellations initiated by any third party, which must be filed at the Court of Commerce, are only feasible once the target trademark has been registered.

Foreign fame

A trademark can only be protected if it is registered in Indonesia, regardless of its fame. However, the Trademark Law provides a mechanism to somewhat protect famous foreign trademarks from bad-faith registrations by other parties.

Should another party try to maliciously apply for a trademark that is identical or similar to a famous foreign trademark, the application will be rejected based on article 21 of the Trademark Law, which stipulates: “An application is refused if the mark is substantively similar to or identical with a well-known mark of other parties for similar goods and/or services, or a well-known mark of other parties for different goods and/or services complying with certain requirements”.

The issue is then shifted to what constitutes a famous trademark. Article 18 of the Ministry of Law and Human Rights Regulation No.12, 2021, on the amendment to Regulation No.67, 2016, concerning the Trademark Registration Decree of the DGIP in the field of trademarks, sets out what makes a trademark famous:

1. 1. Level of knowledge or public recognition of the mark in the business field concerned as a well-known mark;
   2. Volume of sales of goods and/or services and benefits derived from using the mark by the owner;
   3. Market share controlled by the mark in relation to the circulation of goods and/or services in the community;
   4. Area of use of the mark;
   5. Period of use of the mark;
   6. Intensity of promotion of the mark, including the value of investment used for the promotion;
   7. Number of trademark applications and registrations around the world;
   8. Success rate of law enforcement, particularly regarding the recognition of the mark as a well-known mark by an authorised institution; and
   9. Valuation of the mark due to its reputation and quality assurance of goods and/or services protected by the mark.

However, a mark that is famous abroad does not necessarily have the same level of fame in Indonesia. This raises an issue of whether the trademark owner should also establish its fame in Indonesia before taking any actions against other parties.

Usage requirements

Since Indonesia adopts the first-to-file principle, prior use does not need to be claimed before registration. Evidence of use does not have to be submitted.

If the applicant has filed an earlier application in other countries, the applicant has six months from the priority date to claim priority in Indonesia.

Concerning non-use, by law, a trademark may be cancelled at the Court of Commerce if a registered mark has not been used for five consecutive years from the date of registration or the date of last use. However, the law does not stipulate the minimum threshold of use – hence, in general, any non-use cancellation is very challenging.

Licensing

A registered mark can be licensed to other parties in Indonesia. For an agreement to have a binding legal effect, it will have to be recorded at the DGIP.

In general, a licence agreement should cover the details of the licensor and the licensee, the nature of licensing (exclusive or non-exclusive), the ability to sublicense (or not), the terms of the licence agreement, the rights and responsibilities of the parties, and the object or trademark to be licensed.

The licence agreement must not contain provisions that directly or indirectly damage the Indonesian economy, or limitations obstructing Indonesia’s capacity to acquire and develop technology.

AFFA INTELLECTUAL PROPERTY RIGHTS
15/F Graha Pratama Building
Jl. MT. Haryono Kav. 15
Jakarta – 12810, Indonesia
Tel: +62 21 8379 3812
Email: emirsyah.dinar@affa.co.id

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From Asia to Russia: Trademark laws for Asian businesses

Despite the political turbulence in recent years, our practice shows that many companies from Asian countries are entering or planning to enter the Russian market. For such companies, it is important to know how to protect and enforce their intellectual property rights to avoid unnecessary disputes and costs. So, what should applicants from Asian countries know about Russian trademark legislation and practice?

Q: Why is it crucial to file a trademark application with the Russian Patent and Trademark Office (PTO) before using it?

According to the trademark legislation, a trademark is defined as “a designation used to individualise goods of legal entities or natural persons”. Therefore, any protectable word, design, slogan, sound, symbol, etc., can serve as a trademark that identifies goods or services of a particular trader. The list of signs that may function as trademarks is also non-exhaustive, allowing for the registration of non-traditional marks.

Russia is a first-to-file jurisdiction, which is why it is important to apply for registration of a trademark before starting to use it. The trademark legislation does not recognise prior use rights (as a general rule, the exclusive right to use a trademark arises as a result of state registration).

Q: Is it possible for Asian companies to file trademarks in native characters?

The overwhelming majority of consumers in Russia do not understand Asian languages (e.g. Chinese, Japanese or Korean). As a result, designations consisting of characters in these languages are considered by the PTO as graphical marks, and they are not regarded as being non-distinctive per se. Also, there are no special requirements for filing applications for the registration of such designations.

That said, it is necessary to note that for a designation to be registered as a trademark, it shall meet certain requirements. Particularly, it shall not contain false or misleading elements, and it shall not be descriptive with respect to the applied list of goods.

Therefore, even though designations consisting of characters in Chinese, Japanese or Korean languages are generally considered as graphical designations, the examiner may issue an inquiry requesting the semantic meaning of them – in case the semantic meaning is not provided at the time of filing – and apply a standard legal approach to their registrability.

Taking into account that word marks are commonly used in oral speech, since they may be easily remembered and pronounced by the consumers, it is reasonable for Asian companies to consider applying for the Latin and/or Cyrillic versions of their marks as well. This allows the consumers to recognise the brand more easily. Such registrations will strengthen and widen the scope of legal protection and may prevent the potential registration of confusingly similar Latin or Cyrillic trademarks by third parties.

One of the latest examples showing the importance of registering Latin and Cyrillic versions of designations in Asian characters is the DOSIRAK case.

A third party applied for a combined designation with the word element KARISOD in Cyrillic; however, this designation was refused registration due to its confusing similarity with DOSIRAK marks registered in Latin and Cyrillic, being a mirror anagram of the South Korean company’s brand, DOSIRAK.

Another important consideration when selecting between the Latin or Cyrillic versions of a trademark is ensuring that the mark aligns with public interests and moral principles. This is particularly relevant because certain words in Asian languages, when pronounced, may sound similar to vulgar terms in Russian.

Such similarities could lead to an outright refusal of trademark registration, as the mark might be deemed contrary to public interests and moral standards. To prevent such issues, it is highly recommended to consult with your Russian distributors or trademark attorneys before submitting a trademark application.

Q: What happens next after the application is filed?

The Russian PTO has about 18 months from the filing date to examine a trademark application, according to the existing administrative regulations. However, the PTO is actively working to reduce examination timelines, which now average between six to eight months. An expedited procedure of up to two months is available, subject to an extra fee.

Q: Is a letter of consent acceptable?

If a prior trademark is cited by the examiner as an obstacle, a letter of consent from its owner may be considered during the examination process. However, if a letter of consent is provided, the examiner is not obligated to accept it unconditionally. Its acceptance depends on the risk of confusion between the trademarks, which means that in cases of close similarity between trademarks, the consent may not be taken into consideration, even if provided.

Q: Is the refusal issued by the examiner final?

If the examiner’s decision is unfavourable, it can be appealed to the Chamber of Patent Disputes within four months. If this deadline is missed, the appeal may still be reinstated within six months, subject to a fine. If the chamber does not accept the applicant’s arguments, it will uphold the examiner’s decision, which can then be further appealed within three months to the IP Court.

Q: How should a trademark be used in accordance with the law?

Under use requirements, a trademark must be used as registered, or in a slightly modified form that does not alter its essence or distinctive features. Therefore, when it comes to a cancellation action for non-use, it is necessary to prove the use of a trademark in accordance with the issued certificate of registration or with immaterial alterations. In case the trademark is used in a form different from the one that was registered, the question of whether this change is essential or not will be a matter of dispute. Therefore, it is recommended to file trademarks as they are used, or will be used in the future.

It is also worth noting that the use is obligatory and non-use may lead to early termination of trademark registration on the request of an interested third party. A trademark becomes vulnerable to cancellation for non-use three years after the registration date. If the mark has not been in use for more than three years for some reason, it is advisable to consider re-filing the mark to try to retain the trademark rights in light of possible risks due to non-use or lack of use.

Q: How can a company prevent the registration of a similar mark by third parties?

In Russia, there is no opposition procedure in respect of pending applications. However, before decisions are issued on pending applications, it is possible to file observation letters to draw the examiner’s attention to third parties’ prior rights for similar marks registered in respect of similar goods or services.

An observation letter is a very effective tool to try to prevent conflicting marks from being registered at the stage of examination. To reveal similar marks and timely file observation letters, monitoring of the database and trademark registers should be in place in advance.

Q: What if a similar mark is already registered?

If a revealed mark is already registered, an official invalidation action based on prior rights or other grounds, such as misleading elements, may be filed with the Chamber of Patent Disputes of the PTO. Invalidation action based on prior rights may be filed within five years after the publication date (this deadline cannot be extended), and an invalidation action based on absolute grounds may be filed at any time during the validity of a mark.

In conclusion, it is important to note that all foreign applicants must be represented before the PTO by registered trademark attorneys. Therefore, when carrying out all the above-mentioned actions, a trademark owner should receive professional assistance from a qualified trademark attorney, who will provide guidance related to the availability and registrability of the mark, its proper use and the need to file new or additional applications. They will also carry out timely monitoring of the PTO’s database to identify the filing of similar marks by third parties.

GORODISSKY & PARTNERS
B. Spasskaya Str., 25, Bldg 3
Moscow 129090, Russia
Tel: +7 495 937 6116
Email: pat@gorodissky.com

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Focus on trademark protection in Taiwan

Trademark protection is obtained through registration. In addition, Taiwan follows the first-to-file system. The following types of marks are registrable:

1. 1. Trademarks for both goods and services;
   2. Collective marks;
   3. Certification marks; and
   4. Collective trademarks for both goods and services.

All distinctive signs are registrable as trademarks. In addition, according to the examination guidelines on non-traditional trademarks, smells, patterns and positions are also registrable as trademarks, and tactile and gustatory signs are only registrable in exceptional cases.

Registration proceedings. The application is filed at the Intellectual Property Office. Multiple-class applications are possible. Foreign applicants who have no domicile or business office in Taiwan need a local agent. However, a legalised and/or notarised power of attorney is not required, and foreign applicants do not need a domestic company or domicile registration.

The application process includes formal examination, examination of absolute grounds (e.g. distinctiveness) and examination of relative grounds (e.g. likelihood of confusion). Signs without innate distinctiveness can be registered if distinctiveness has been acquired through use.

Opposition against a national trademark. The opposition period is three months from the publication date of a trademark registration.

Duration. A trademark registration is valid for 10 years from the publication date of the registration. A trademark registration is renewable for periods of 10 years.

Grace period for trademark renewal. A trademark may be renewed during the six months preceding the expiry date. The grace period for trademark renewal is six months from the expiry date of the registration. After the expiry of the grace period, the trademark registration will automatically lapse.

A lapsed mark cannot be restored. However, if the owner failed to comply with the grace period for renewal due to an act of God (force majeure), or any cause not attributable to the owner, they may apply for restoration within 30 days from the day following the date on which the cause ceases. However, no application for restoration may be made beyond one year after the failure to comply with the grace period for renewal. A lapsed trademark may be re-registered in the name of a third party at any time if the renewal application is not filed within the grace period.

Use requirements. If a trademark has not been used for three years from the publication date of the registration, or has not been used later for a continuous period of three years without a justifiable cause, the IP office may, ex officio, or at the request of a third party, cancel the trademark registration.

The party alleging non-use of a trademark needs to provide prima facie evidence on petitioning for the cancellation of the trademark registration, while the trademark owner bears the burden of proving trademark use after the cancellation proceeding is initiated. In addition, the party alleging non-use of a trademark is not required to prove a legitimate interest for the cancellation.

Use is only required to occur in Taiwan. Trademark use, as referred to in the Trademark Act, means the use of a trademark for marketing purposes in any of the following situations to enable the relevant consumers to recognise it as a source identifier:

1. 1. Applying a trademark on goods or the packaging;
   2. Possessing, displaying, selling, exporting or importing the goods;
   3. Applying a trademark on articles relating to services provided; and
   4. Applying a trademark on commercial documents or advertisements relating to goods or services.

Use of a mark on digital video or audio, electronic media, the internet or other media also constitutes use of the trademark. Use must not be continuous. Sporadic, intermittent or one-off use will suffice. However, use of a similar or related trademark will not necessarily suffice. Use of a mark in a form different from the one in which it is registered constitutes use of the trademark only if merely minor changes have been made and such changes do not alter the distinctive parts of the trademark.

Use of the mark in a different form does not constitute valid use in the following cases:

1. 1. A coloured trademark is changed to black and white;
   2. The colours of a coloured trademark are changed; or
   3. Only a part of a trademark has been used.

Trademark licence agreement. In Taiwan, a licence agreement may be concluded either in writing or orally. It is permitted to license an unregistered trademark. A registered trademark may be licensed for all or part of the designated goods or services. A licence may be exclusive or non-exclusive. If a registered trademark is assigned after the licence has been entered in the register, the assignee is still bound by the licence agreement. The sale of a registered trademark does not automatically terminate the licence if it is entered in the register.

The Trademark Act provides for the following:

1. 1. If a trademark is assigned after the recordal of a trademark licence, the assignee shall be bound by the licence agreement;
   2. An exclusive licensee has the right to exclude the trademark owner and any third party from the use of the licensed trademark;
   3. An exclusive licensee has the right to sublicense the trademark; and
   4. A trademark owner may abandon their rights; however, if a licence or a pledge has been entered in the register, the trademark owner shall obtain the consent of the licensee or the pledgee.

There are provisions in the Trademark Act for the recording of a trademark licence. The recording of a trademark licence is voluntary, but it becomes effective against third parties only after it is recorded at the IP Office. The recordal must be applied for before the expiration of the trademark registration.

The licence period may exceed the registration period. In this case, if the trademark registration is renewed within the renewal deadline, the licence need not be recorded again. If the trademark registration is not renewed within the renewal deadline, the licence recordal will lapse with the lapse of the registration. However, the licence agreement for the unregistered trademark will still be effective between the licensor and the licensee.

There are no statutory provisions prescribing the form and/or content of a licence agreement. A request to record a trademark licence in the register shall be made by the trademark owner or the licensee by filing a written request specifying the following:

1. 1. The name, address of domicile or business establishment, nationality or locality of the trademark owner and the licensee and, if any, the name of the representative;
   2. If any, the name and address of the domicile or business establishment of the agent;
   3. The registration number of the trademark;
   4. Whether the licence is exclusive or non-exclusive;
   5. The date when the licence took effect and, if any, when it will be terminated;
   6. Where the licence is for part of the designated goods or services, the list of such goods or services and the classes thereof; and
   7. Where the licence is for a particular locality, the name of that locality.

The licence agreement determines when the licence becomes effective. The licence becomes enforceable against third parties on the date when the licence recordal is published in the official gazette. An unrecorded licence is not required to be published.

There is an evidentiary presumption that the trademark use of a recorded licensee is lawful. A non-exclusive licensee may not join the trademark owner’s infringement proceedings unless the trademark owner petitions the court for third-party participation.

The Trademark Act provides that an exclusive licensee has the right to initiate infringement proceedings in its own name, unless the license agreement provides otherwise. The licensee does not need to cite the trademark owner as a co-defendant in any such proceedings.

DEEP & FAR ATTORNEYS-AT-LAW
13th F1., No. 27, Sec. 3, Chung San N. Rd.
Taipei 104, Taiwan, ROC
Tel: +886 2 25856688 #8187
Fax: 886 2 25989900
Email: lawtsai@deepnfar.com.tw