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When claiming trademark priority in Taiwan, choice of country can make a difference

by Jason Yan and Peter Lavelle

When filing a trademark application in Taiwan, an applicant may use the first application filed in a foreign jurisdiction to serve as a basis for a priority claim under certain conditions. While the Taiwan Trademark Act allows an applicant to claim priority within 6 months of the first filing date of the foreign application, it is important to note that the Taiwan Intellectual Property Office (TIPO) will only grant a right of priority if the foreign application was filed in a member state of the World Trade Organization (WTO) or in a country that reciprocates recognition of priority rights with Taiwan, in accordance with Article 20 of the Taiwan Trademark Act:

“An applicant who has duly filed an application for trademark registration in a country which has reciprocal recognition of priority rights with the ROC, or filed such application with a member of the World Trade Organization (WTO), may claim a right of priority, for the purposes of registering the same trademark in the ROC for some or all the same goods or services, within six months from the day following the date of filing of the first such application.”

Taiwan does not have any such reciprocity agreements in place at this time with any states that are not also WTO members. As such, only foreign applications filed in WTO member states can serve as the basis for trademark priority claims in Taiwan. This restriction poses significant challenges to applicants seeking to claim priority in Taiwan using an application filed in a country that is party to the Paris Convention for the Protection of Industrial Property (Paris Convention) if that country is not also a WTO member state.[1]

Article 4 (A)(1) of the Paris Convention sets out when the right of priority can be invoked:

“Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.”

For trademarks, the priority period is 6 months from the first filing date in any country of the Union.

Taiwan’s current political status prevents it from becoming a contracting party to the Paris Convention. As it is not a party to the convention, the Taiwan trademark authorities are not bound by obligations under it. As a result, if the first application is filed in a country of the Union that is not also a member state of the WTO, the application cannot be used to claim priority for a further trademark application in Taiwan.

Countries of the Union which are not member states of the WTO include Algeria, Andorra, Azerbaijan, Bahamas, Belarus, Bhutan, Bosnia and Herzegovina, Comoros, Democratic People’s Republic of Korea, Equatorial Guinea, Haiti, Holy See, Iran, Iraq, Lebanon, Libya, Monaco, San Marino, Sao Tome and Principe, Serbia, Sudan, Syrian Arab Republic, Turkmenistan, and Uzbekistan.

Priority claims based on applications filed in any of the above states will not be recognized by the TIPO. This does not mean that an applicant who makes an initial filing in a non-WTO member state is barred from making a claim of priority in Taiwan altogether. In practice, if an applicant makes an initial filing in one of the above states, and then later files a trademark application in a WTO member state, the first filing in the WTO member state will be deemed to be the first filing date when the applicant makes a priority claim during a trademark application in Taiwan.

While Taiwan is not a contracting party to the Paris Convention, like all WTO members it is a party to the Agreement on Trade-related Aspects of Intellectual Property Rights (the TRIPS Agreement). Article 2.1 of the TRIPS Agreement stipulates that WTO member states shall comply with Articles 1 through 12, and Article 19, of the Paris Convention. Furthermore, at the International Patent Cooperation Union Assembly in 1999, the World Intellectual Property Organization (WIPO) released a Memorandum of the Secretariat specifically referring to Article 2.1 of the TRIPS Agreement and Article 4(A) of the Paris Convention, interpreting these to mean that WTO members are obliged to recognize priority claims based on applications filed in a country of the Union, even if that country is not a WTO member.

WIPO is an agency of the United Nations (UN), and Taiwan is not a member state of the UN due to its current political status. Accordingly, the WIPO Memorandum and WIPO’s interpretation of Article 2.1 of the TRIPS Agreement and Article 4 of the Paris Convention are not binding on Taiwan’s trademark authorities. However, Article 2.1 requires all WTO members to comply with Articles 1 through 12 and Article 19 of the Paris Convention. Does this mean the TIPO has obligations under the TRIPS Agreement to recognize priority claims based on trademark applications filed in any Paris Convention state, in accordance with Article 4 of the Convention? TIPO’s position is that since the WTO has not expressly interpreted Article 2.1 of the TRIPS Agreement and Article 4 of the Paris Convention to mean that all WTO members must recognize priority claims from all Paris Convention countries, Taiwan is therefore not required to recognize priority claims based on applications filed in Paris Convention countries which are not also WTO member states. Furthermore, as Taiwan is not a Paris Convention country to begin with, it is not in violation of the letter of Article 4 of the Paris Convention, which only provides that all Union countries shall grant priority rights to trademark applications filed in other Union countries.

Although WIPO interprets Article 2.1 of the TRIPS agreement and Article 4 of the Paris Convention as requiring all WTO member states to recognize priority claims from any Paris Convention countries, the TIPO currently only accepts the WTO’s interpretation of the TRIPS Agreement. While it is true that the WIPO’s interpretation has no legal effect in Taiwan, there is nothing to prevent the TIPO from choosing to adopt and affirm it. The TIPO should reconsider its stance on the WIPO interpretation, and should willingly implement it in order to bring Taiwan in line with international standards on this issue. A willingness to do so could also reflect well on Taiwan if it seeks to become a UN member state in the future. Taiwan should also amend Article 20 of the Taiwan Trademark Act to better conform with the obligations and practices set out by the WIPO. Pending such future changes, the situation remains quite complicated, and the most straightforward path to claiming priority in Taiwan at present is to base the claim on an application in a WTO member state.

For more information on trademark matters, please contact Jason Yan at jasonyan@winklerpartners.com.

Legal intern Amber Chou contributed to this article.


[1] The Paris Convention is an international agreement established in 1883 for the protection of industrial intellectual property. As of August 2019, there are 177 Contracting Parties to the Paris Convention. These Contracting Parties are referred to as the “countries of the Union” under the treaty.

 

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