含羞草社区

Statutory laws protect intellectual property rights in Taiwan through the Patent Act, Trademark Act, Copyright Act, Trade Secrets Act, Plant Variety and Plant Seed Act, Integrated Circuit Layout Protection Act, Fair Trade Act and Intellectual Property Case Adjudication Act.

As in many major jurisdictions, patents, trademarks, plant varieties and integrated circuit layouts require examination and registration to be protected, whereas copyright and trade secrets are automatically protected.

The Fair Trade Act serves as supplementary legislation for protecting intellectual property rights, particularly in deterring unfair competitive acts, protecting unregistered well-known symbols, and regulating the issuance of warning letters.

The Intellectual Property Case Adjudication Act, implemented alongside operation of the Intellectual Property Court, serves as a special procedural law that takes into account the unique nature of IP rights compared with other tangible property rights. There are three types of IP laws commonly used by companies: the Patent Act, the Trademark Act and the Copyright Act.

The Patent Act

Taiwan regulates inventions, utility models and designs under the Patent Act. In accordance with the first-to-file principle, an application must be filed with the Taiwan Intellectual Property Office (TIPO) within 12 months (six months for designs) to claim priority via the Paris Convention route. Despite the fact that Taiwan is not a member of the Patent Co-operation Treaty (PCT) or the Hague System, the TIPO accepts priority claims based on PCT applications or design applications based on the Hague System.

In addition to the rules for priority claims, the Patent Act also provides a grace period system. Any disclosures made by an unauthorised third party or patentees themselves within 12 months (six months for designs) before the filing date will not be considered prior art. Disclosures made by patent gazettes, however, are not exempted by the grace period.

The protection periods for inventions, utility models and design patents are 20, 10, and 15 years, respectively. Patent term extensions are available for pharmaceutical and agrichemical patents to compensate for delays caused by applications for drug permits.

Since August 2019, Taiwan has implemented the pharmaceutical patent linkage system to promote early resolution of patent disputes through the disclosure of patent information.

Patentees can initiate infringement lawsuits during the generic drug application stage and suspend the approval of the generic drug for 12 months after receiving notification. Generic drug applicants who successfully challenge patent validity or obtain a non-infringement decision can receive a 12-month sales exclusivity period.

Other notable practices include:

(1) Remedies for TIPO rejection. Applicants can request re-examination if they receive a decision of rejection of their patent application within two months. Re-examination is by a different examiner. If there is further rejection, applicants may file an administrative appeal with the Ministry of Economic Affairs (MOEA). If the appeal decision does not overturn the rejection, applicants may file an administrative lawsuit.

A trial system similar to application rejection remedial practice in Japan was previously proposed, but the amendment has not yet been passed.

(2) Indirect infringement. Unlike in the US and Japan, Taiwan’s Patent Act does not specify any provisions concerning indirect infringement.

Patentees can, however, pursue claims based on joint tort liability under the Civil Code, although this would require them to prove subjective elements and causation of the infringer.

(3) Damages. While injunctive relief requires only objective elements, damages claims require proof of willfulness or negligence, as well as causation. Recent Supreme Court judgments have emphasised the necessity for lower courts’ reasoning regarding willfulness or negligence, which – in contrast with Japan’s presumption of negligence – imposes heavier burden on plaintiffs.

The Trademark Act

This governs four types of marks: trademarks, certification marks, collective membership marks and collective trademarks.

Non-traditional marks such as three-dimensional shapes, colours, sounds, motions, holograms, pattern sequences – or any type of mark that is sufficiently distinctive to identify the source of goods or services – may be subject of trademark protection. In practice, however, securing registration for non-traditional marks remains more challenging than for traditional trademarks.

Taiwan follows the first-to-file principle without requiring prior use. Applications must be filed with the TIPO within six months to claim priority (Paris Convention route). While Taiwan is not a member of the Madrid System, priority claims based on international registrations are acceptable.

There are three types of procedures for challenging a registered trademark, namely opposition, invalidation and cancellation.

Opposition must be petitioned within three months of registration. There is no restriction on the eligibility of the petitioner. Opposition is reviewed by an examiner who has not examined the original application.

Invalidation must be petitioned within five years of registration. Eligible petitioners are limited to interested parties or examiners. The invalidation proceeding is decided by a panel of three examiners.

Anyone may file a cancellation, without restriction on eligibility. When seeking cancellation on the grounds of non-use, the petitioner must first explain that the trademark owner has, without justifiable reason, not used the trademark for three consecutive years. The owner is given the opportunity to demonstrate actual use as a counter-argument. Partial cancellation for specific goods or services is also possible.

Available remedies for any dissatisfaction with rejection of trademark registrations – or decisions on opposition, invalidation or cancellation – are firstly administrative appeal before the Board of Appeals (under the Ministry Of Economic Affairs), then administrative lawsuit before the IP Court.

As with the Patent Act amendment, the TIPO previously proposed establishing a trial system for disputes in the draft amendment of the Trademark Act, but it did not pass the legislative review.

Regarding protection of well-known marks, Taiwan lacks a defensive trademark system like Japan. However, the scope of protection for well-known trademarks is broader than for ordinary trademarks for goods and services. For well-known trademarks, proprietors are more likely to exercise their rights over other identical or similar marks in terms of leading to confusion among the relevant public, or diluting distinctiveness of the well-known trademark.

A well-known mark may also prevent use of another mark in the name of another’s company, business, group, domain or any other business entity.

As for determining whether a mark is well known, the TIPO has compiled and published cases of recognised well-known trademarks on its website for reference. If a mark is well known but not registered in Taiwan, the proprietor must seek remedies through the Fair Trade Act.

Historically, Taiwan’s trademark agencies have not been strictly regulated. Lawyers, patent attorneys and certified public accountants – as well as those acquiring professional skills through on-the-job training – were eligible to act as trademark agents.

But under a new trademark agent system since May 2024, only qualified and registered trademark agents, attorneys-at-law and certified public accountants can perform agency services. Patent attorneys are no longer eligible. This further protects the interests of trademark owners.

The Copyright Act

Any creation which meets the requirements of a work can be protected under Taiwan’s Copyright Act. Requirements are work: (1) showing originality and creativity; (2) of human intellectual creation; (3) showing a certain form of expression; (4) in the cultural domain; and (5) not legally excluded from protection, with no limitation on the form of expression. No registration is required.

For service work, while the employee is generally considered the author, parties may contractually agree to designate the employer as author, allowing corporate authorship.

Regarding genuine parallel imports, the Copyright Act follows domestic exhaustion. Only those obtaining ownership of original works or legal reproductions within Taiwan may distribute them through ownership transfer.

Importing original works or legal reproductions from abroad without copyright owner consent constitutes infringement, except for personal use.

Regarding rights restrictions, unlike Japan’s enumerative approach, Taiwan’s Copyright Act includes both specific fair use scenarios and general provisions. Fair use is determined by considering the nature of the work, purpose and nature of use, quantity used relative to the work as a whole, and effect on market value of the work.

Conclusion

Some primary IP laws have been revised with reference to Japanese laws, resulting in similar legal frameworks and provisions between the two countries. However, there are still subtle differences in terms of specific arrangements.

When applying the law to actual legal issues, attention should be paid to the differences between Japanese and Taiwanese laws, and consultation with local professional law firms is recommended.