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Title: Enforcement Rules of the Trademark Act CH
Category: Ministry of Economic Affairs(經濟部)
Chapter III Trademark Rights
Article 35
Renewal of the registration
A request for renewal of the trademark right for all or some of the designated goods or services for which it is registered shall be made by the applicant by filing a written request.
A request for renewal of the trademark right as prescribed in the preceding paragraph may also be made by a person who has interests on the existence of the trademark right by filing a written request clarifying the reason.
Article 36
Division of registration
Paragraphs 1 and 2 of Rule 27 shall apply mutatis mutandis to a request of division of a registration. A copy of the written request shall also be furnished for each divisional application along with related documents of the original application.
Where the division of a registration is accepted, a trademark certificate shall be issued for each divisional registration by the Registrar Office.
Article 37
Provisions applied mutatis mutandis to change and correction of the registration
Rules 25 and 26 shall apply mutatis mutandis to a request of any change or correction of the particulars of a trademark registration.
Article 38
Recordal of the license
A request to record a trademark license in the Register shall be made by the proprietor of the registered trademark or the licensee by filing a written request specifying the following:
(1) the name, address of domicile or business establishment, and nationality or locality of the proprietor of such registered trademark and the licensee, and, if any, the name of representative;
(2) if any, the name and address of domicile or business establishment of agent;
(3) the registration number of such registered trademark;
(4) where the license is exclusive or non-exclusive, that fact;
(5) the date when the license took effect and, if any, will be terminated;
(6) where the license is for some of the designated goods or services for which such trademark is registered, the list of such goods or services and the classes thereof;
(7) where the license is for a particular locality, the name of that locality.
Where the recordal of license in the Register referred to in the preceding paragraph is requested by the licensee, the licensing contract or any other document to prove such license shall be submitted; where the recordal of license in the Register is requested by the proprietor of such trademark, the Registrar Office may, for checking the content of license, give such proprietor a notice to submit the aforementioned document to prove such license.
A request referred to in the preceding paragraph shall be filed for a single registration. A single request shall be sufficient even where the license relates to more than one registration, provided that the proprietor and the licensee are the same for all registrations, all of the designated goods or services are licensed to be used in the same locality for all registrations, and the expiry dates of the license with respect to all registrations are the same or no expiry date of the license has been arranged by both parties for all registrations.
The three preceding paragraphs shall apply mutatis mutandis to a request to record a trademark sub-license in the Register. Unless otherwise prescribed in Paragraph 1 of Article 40 of the Act, such request shall be made with the submission of documents proving that the person who requested is entitled to sub-license.
The designated goods or services and locality in respect of a recordal of a trademark sub-license in the Register shall not go beyond the scope of the original license.
Article 39
Recordal of the transfer
A request to record a transfer of trademark right in the Register shall be made by filing a written request, as well as furnishing the contract or any other document of proof of such transfer.
A request referred to in the preceding paragraph shall be filed for a single registration. A single request shall be sufficient even where the transfer relates to more than one registration, provided that the proprietor and the transferee are the same for each registration.
Article 40
Recordal of the pledge
A request to record an establishment, change, or extinguishment of a pledge of trademark right in the Register shall be made by the proprietor of such registered trademark or the pledgee by filing a written request, and, according to the matter of a pledge to be recorded, furnishing the following:
(1) for the recordal of an establishment of a pledge in the Register, the contract or any other document of proof of such establishment of a pledge;
(2) for the recordal of a change of a pledge in the Register, documents of proof of such change of a pledge;
(3) for the recordal of the extinguishment of a pledge in the Register, documents to prove that the performance of such obligation has been made, documents to prove that the pledgee consented to cancel the recordal of the establishment of a pledge, a judgment of the court and a certificate to the effect that such judgment has become final or documents of proof which have the same effect as a final judgment of the court.
Where a request to record an establishment of a pledge in the Register is made, the amount of the claim secured by the pledge shall be specified in the written request.
Article 41
Request to issue a replacement certificate or re-issue one
A request to issue a replacement registration certificate or re-issue a registration certificate of a registration may be made by the proprietor of such registration by filing a written request clarifying the reason in any of the following:
(1) particulars entered in the registration certificate being changed;
(2) the registration certificate being outmoded or damaged;
(3) the registration certificate being destroyed or lost.
Where a replacement registration certificate is issued or a registration certificate is re-issued pursuant to the preceding paragraph, the original registration certificate shall be published for nullification in the Trademark Gazette.
Article 42
Amendments to the facts and grounds in respect of an opposition
Where the facts and grounds in respect of an opposition are not precise or self-contained, the Registrar Office may give the opponent a notice to amend within the prescribed period.
The opponent may change or add the facts and grounds on which the opposition is based within three months from the day following the date of publication of the opposed trademark registration.
Article 43
Opposition procedure
Where the proprietor of an opposed trademark submit a statement of defense to the opposition or the opponent submit his/her opinion on the statement of the proprietor pursuant to Paragraph 2 of Article 49 of the Act, any attachments to such statement of defense or opinion shall also be enclosed with the copy of such statement of defense or opinion.
Article 44
Filing opposition against a registered trademark after the division of registration thereof has been accepted and published
Where an opposition is filed against a registered trademark after a division of such trademark registration has been accepted and published, the Registrar Office shall give the opponent a notice to designate the trademarks to be opposed, submit related documents and calculate the required fee for each trademark to be opposed within the prescribed period. The opponent shall, if underpayment was made, make up the balance or may, if overpayment was made, request for a refund with the receipt of the payment.
Article 45
Before rendering the disposition of opposition, the division of the opposed trademark registration has been accepted
Where a division of trademark registration was accepted before the disposition of opposition to such registration is rendered, the Registrar Office shall give the opponent a notice to make a statement that he/she requests to proceed with the opposition to all or some of the divisional registrations within the prescribed period. If the opponent failed to make such statement within the prescribed period, the Registrar Office shall proceed with the opposition to all of the divisional registrations.
Article 46
Provisions applied mutatis mutandis to invalidation and revocation
Paragraph 1 of Rule 42 and Rule 43 to the preceding rule shall apply mutatis mutandis to invalidation and revocation.