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What Happens When a Ground for Rejection Disappears During a Registration Challenge in Taiwan?

[ August 2026 ] >Back
Trademark
I. What Happens When a Ground for Rejection Disappears During a Registration Challenge in Taiwan?
   
  When managing global trademark portfolios, understanding the precise timing for assessing trademark validity is critical. A frequent question arises under Taiwan trademark practice: If a trademark initially lacked distinctiveness at the time of registration, but subsequently acquired distinctiveness (secondary meaning) through intensive use BEFORE the Taiwan Intellectual Property Office (TIPO) rules on the opposition or invalidation decision, should the registration still be revoked?
   
  The Supreme Administrative Court of Taiwan addressed this exact issue in its landmark Judgment No. 111-Shang-463, providing clear guidance for international brand owners.
   
  1. Inherent vs. Acquired Distinctiveness
     
    Under Article 29, Paragraph 1 of the Taiwan Trademark Act, a trademark must possess distinctiveness to be registered. Distinctiveness is categorized into two types:
     
   
  • Inherent Distinctiveness: The mark is inherently capable of identifying the source of goods or services from the outset.
  • Secondary Meaning: A mark that initially lacks inherent distinctiveness can become registrable if, through actual marketing and extensive use in commerce, the relevant consumers come to recognize it as a brand.
     
    The core dispute lies in the timeline. If a mark transforms from "non-distinctive" to "distinctive" after it is approved for registration but before TIPO issues a formal decision on a third-party opposition or invalidation action, which point in time dictates its validity?
     
  2. The "Time of Registration Decision" Takes Precedence
     
    Historically, the registrability of a trademark was determined based on the conditions present at the time of application. However, recognizing that trademark examination takes time and circumstances can change, the Trademark Act was amended. According to the legislative intent behind Articles 29 and 30 (grounds for refusal of trademark registration), the standard benchmark is now the time when TIPO officially approves the mark registration, rather than the application date.

Article 30, Paragraph 2 explicitly isolates specific grounds—such as geographical indications for wines/spirits, well-known trademarks, bad-faith registrations, or unauthorized use of another's name—where the time of application remains the strict statutory benchmark to protect prior rights and public policy. For general grounds like distinctiveness, the date of the registration decision governs.
     
  3. Opposition vs. Invalidation: Why the Timeline Diverges
     
    Taiwan’s trademark system provides two primary mechanisms for the public to challenge a registered mark: Opposition and Invalidation. The Supreme Administrative Court emphasized that the law treats these two mechanisms differently regarding changing circumstances.
     
    (1) Opposition (Filed within 3 months of publication):
       
      An opposition must be initiated within a strict three-month window following the trademark publication. Because this timeframe is very short , the impact on the public and the interests of the trademark owner is relatively minimal. Therefore, the court ruled that the critical date for assessing distinctiveness in an opposition remains the time of the registration decision. 

Even if a brand owner demonstrates that the mark acquired distinctiveness during the opposition proceedings, TIPO must still sustain the opposition and revoke the registration if the mark lacked distinctiveness when it was approved.
       
    (2) Invalidation (Filed within 5 years of publication):
       
      Conversely, an invalidation action can be brought up to five years post-registration. Recognizing that a cancellation after years of commercial use could severely disrupt market order and harm the brand owner, Article 60 provides a safe harbor. It states that if the ground for non-registrability no longer exists at the time of the invalidation decision, TIPO may dismiss the invalidation action after balancing public interest and the parties' benefits.

The Court explicitly confirmed that this safe harbor applies exclusively to Invalidation actions and cannot be applied to Opposition cases. The Court noted that this distinction is purely based on timing: invalidations challenge long-standing rights, whereas oppositions deal with newly registered marks. Therefore, the legislature intentionally withheld this safe harbor from opposition proceedings to ensure a rigorous, immediate check on newly registered marks.
       
  4. Summary: Timeline for Assessing Grounds for Non-Registrability
     
    The relationship between the timing of a non-registrability ground and its corresponding critical assessment date under Taiwan practice is summarized below:
     
   
Assessment Date Non-Registrability Grounds Provision / Precedent
Filing Application Only for specific bad-faith applications (e.g., geographical indications for alcohol, conflict with well-known marks, bad-faith misappropriation, unauthorized use of personal/corporate names). Article 30, Paragraph 2 of the Trademark Act
Decision of Registration General absolute grounds for refusal, including a lack of inherent distinctiveness. (This remains the fixed benchmark during subsequent Opposition proceedings). Articles 29 & 30, Paragraph 1 of the Trademark Act
Decision of Opposition  None. No legal grounds are evaluated based on the circumstances at the time the opposition decision is rendered. Supreme Administrative Court Judgment No. 111-Shang-463
Decision of Invalidation  Generally, Invalidation cases follow the registration decision standard, but exceptionally permits a safe harbor if the non-registrability ground has ceased to exist, subject to an equitable balancing of public and private interests. Article 60 of the Trademark Act
     
  5. Key Takeaways for International Brand Owners:
     
    1. Compile Defensive EvidenceEarly: If your trademark risks being challenged for a lack of inherent distinctiveness, compile and submit  robust evidence of acquired distinctiveness during the initial examination phase, before the registration decision is made.
       
    2. The Opposition Vulnerability: Relying on intensive commercial use after registration will not cure a lack of distinctiveness if a third party files an opposition within the initial 3-month window. In such scenarios, the court and TIPO will strictly access whether the mark was distinctive as of the date it was approved for registration.