When setting up a new business or expanding into a new country there are so many things to consider. Just registering a business itself is a big deal. In Taiwan it can easily take 8-12 weeks to get a business set up so you can start trading. It is no wonder then that very important issues often get forgotten or indefinately put on hold. One such issue is the registration of trademarks.
A trademark is anything that your customers would use to identity your company. The most obvious example is of course a company or product name (ie. Enspyre, Microsoft, Windows, Apple, iTunes etc.) but other things like product shapes, colors, or music can also be trademarked. Think about the In order to protect your trademarks and make sure that no one else can use them, we need to register them with the government’s Taiwan Intellectual Property Office. If accepted, you know get an exclusive license for that trademark for a period of 10 years.
Many business owners probably overestimate the cost of registration at the same time as they are grossly underestimating the cost of a trademark conflict.
Picking Your Trademark
It is always hard to pick a new name for a company or product. All the owners has to like it. It should sound “right” for the market and you should be able to register a suitable website domain name. But it also has to be possible to register the trademark with the government.
We have found some great resources about trademark from a partner company of ours called MUSA Trademark. From their article about picking trademarks we can learn a lot.
Your mark must be distinctive enough to be protectable and registrable with trademark offices in Taiwan and around the world. The point of it being distinctive is so that customers will not be confused whose products they are buying. Also, a distinctive mark is easier to register and to protect from infringement than a descriptive trademark.
To make it easier to evaluate how likely a trademark is to be registered, we categorize distinctive trademarks into three types:
Coined trademark – a completely new word with no dictionary meaning
Arbitrary trademark – a word that has no meaning related to your product or industry
Suggestive trademark – a word that in a clever way suggest the quality or feature of your products
As you brainstorm and come up with possible names, you should test them against these three types of distinctive trademarks. If the word you like does not fit in one of them, chances are you should move on to the next.
They even have this nifty flowchart we are publishing with their permission.
Learn more about picking the right name here: https://musa-trademark.com/trademark-blog/how-to-select-a-trademark-for-your-business/
The government divides up all products and services in 45 classes and grants protection per class. This means that you need to decide which class or classes you want to register in. You could of course register for every class, but you are more likely to run into another similar trademark and since you pay per trademark per class, it will be expensive. A company like Aliababa for example can afford it, the rest of us should most likely choose the classes where we have products or services now and in the next few years.
Then you need to decide in which countries you want to register. Basically you should register in any country where you will operate or sell products. But remember to think forward. If you put off to register in a country and later try to start selling there you might find that someone else have already registered your trademark there. It could be a company that completely on their own has picked the same name for themselves or it could be a nefarious squatter who spent a bit of money to register your trademark and is just waiting to sell it back to you for a big amount of money.
Just like you can set up your Taiwanese company by yourself, you can also register your trademark completely by yourself. We suggest that you do your homework so you know what you are talking about but then still work with a professional. This way you save money and time and get better advice.
Registering a trademark can cost anywhere from NTD10,000 to NTD35,000 per trademark per class depending on who you get to help you. The key is to pick a trademark agent who can help you not just fill out a registration form but who will also ask you the right questions and help you define a trademark strategy that will stand the test of time.
Compared to having to recall all your products because some other company says you are infringing on their trademark or fighting a squatter in court, this is quite affordable. Just as a small scare – Apple paid USD60 million for the trademark ‘iPad” in China.
When to start?
You should register as soon as possible. You can even register a trademark in the name of one or more of the co-founders before your company is set up, just to make sure that you won’t miss out on your favorite name. Later it is a simple thing to transfer ownership into the name of your company or branch office.
There are many great companies who can help you register your trademark in Taiwan or around the world, but we have a partner company we would like to recommend – MUSA Trademark.
Not only do they have close to a decade of experience, they are also a great supporter of the foreign business community in Taiwan. They are members of both the French and the Canadian Chambers of Commerce and in 2017 they sponsored the Dragons’ Chamber investment pitch event organized by the Canadian Chamber.