Trade marks, designs and geographical indications: protecting Italian intellectual property in Taiwan
Taiwan operates a first-to-file intellectual property system where unregistered rights, however famous in Europe, carry no legal weight. Italian producers need separate registrations for trade marks, designs and geographical indications, each following its own procedural and enforcement logic.
Taiwan's first-to-file system and the unregistered brand
Taiwan's intellectual property law operates on a first-to-file principle. Rights in a trade mark arise upon registration, not upon use, reputation or prior adoption. A brand that is globally famous, including in Europe, carries zero legal protection in Taiwan if it is unregistered.
This differs fundamentally from some European jurisdictions where reputation confers some rights even without registration. In Taiwan, a third party can file a trade mark application in your name, your brand identity or your Chinese equivalent, and if their application is approved before yours, they own the rights.
The practical consequence is that many Italian companies discover their brand is already owned in Taiwan by a distributor, an agent, a speculative registrant or a competitor. Buying back your own name through negotiation or cancellation proceedings is possible but expensive and time-consuming. Filing early, before market entry or distributor appointment, is the practical precaution.
Trade mark registration: Latin names and Chinese characters
A trade mark in Taiwan is registered against a specific list of goods and services classified by a standard taxonomy. An Italian fashion house that owns a Latin-character trade mark must also register the trade mark in Chinese characters if the brand operates in Chinese markets or if the brand is marketed or displayed in Chinese on product packaging, retail signage or marketing materials.
The Chinese-character version is a separate registration with its own application, examination, opposition and renewal cycle. The Taiwan Intellectual Property Office will not derive a Chinese version from a Latin registration; the applicant must supply it. This means a deliberate choice about how your brand name translates or sounds in Chinese.
Many Italian producers make the mistake of letting a distributor, an agent or the market choose the Chinese name, or of registering it informally without securing the trade mark rights. If a competitor or a third party files the Chinese version of your brand before you do, you cannot easily reclaim it. The risk is highest when the distributor or agent holds the China trademark rights and the relationship later deteriorates.
Specification drafting and goods and services classification
A trade mark registration in Taiwan is limited to the specific goods and services listed in the application. A fashion brand cannot claim protection across all goods; the registration must specify articles of clothing, footwear, bags, accessories or other categories as appropriate.
Related goods in different classes require separate class registrations. An Italian luxury house that makes both leather goods and fragrances must file separate applications in the appropriate classes, as the trade mark system will not broaden protection beyond the classes claimed at registration.
The specification matters because it determines the scope of what the owner can stop others from using. An overly narrow specification leaves gaps; an overly broad specification will face refusal at examination. Consultation with a Taiwan intellectual property adviser during drafting is the norm, as the Taiwan Intellectual Property Office applies strict interpretation rules.
Registered design protection for shape, appearance and packaging
Taiwan recognises registered design protection for the visual appearance and shape of products. For Italian producers of furniture, lighting, eyewear, footwear and packaging, the appearance and shape of the product is often the asset. Registered design protection in Taiwan covers the ornamental or aesthetic characteristics of a product, and it protects the right to exclude others from producing or importing products with an appearance substantially similar to the registered design.
Taiwan's design system operates on an absolute novelty principle. A design is no longer new if it has been disclosed anywhere before the application is filed. This means an Italian producer cannot file a design in Taiwan after showing the same design at a European trade fair, in a catalogue or on a website. The design must be filed before any public disclosure.
Partial designs and related designs are available. A partial design protects only the ornamental elements that are distinctive, not the entire product. Related designs filed at the same time are treated together for examination purposes. These tools allow producers to protect multiple variants of a design family within a single registration framework.
Geographical indications and Italian place names
A geographical indication is a sign that identifies a good as originating from a specific place and possesses qualities or characteristics linked to that geographic origin. Many Italian products benefit from geographical indication protection in Europe: wines, spirits, cheeses, cured meats, olive oil and other specialty foods are examples, as are certain textiles and crafted goods.
In Taiwan, a geographical indication must be protected through a collective mark or a certification mark registered with the Taiwan Intellectual Property Office. This is a structural difference from European practice: the collective mark or certification mark must be filed by the consortium, the geographical association, the producer collective or the government protection body, not by individual producers. A single company cannot file for geographical indication protection for its region of origin.
A place name protected in Europe automatically gains no rights in Taiwan. Italian producers must initiate a separate registration process, and this must be done by the competent body in Taiwan with standing to represent the producers of that region. This places the burden on industry associations, consortia and government bodies to file and maintain these registrations.
Enforcement: customs recordal, administrative and civil routes
Enforcement of intellectual property rights in Taiwan operates across three main routes. The first is preventive: recording a trade mark, design or geographical indication with Taiwan Customs allows the border authority to seize counterfeit goods in transit. This recordal process is separate from the underlying registration and requires a formal request to the Customs Bureau.
The second is administrative proceedings conducted by the Taiwan Intellectual Property Office. A rights holder can file a complaint against an infringing user, and the office will investigate and issue a cease-and-desist order or rejection of the infringing application. This route is faster than litigation and does not require proof of damages, but the remedies are limited to stopping the infringement.
The third is civil litigation in Taiwan courts. An infringement action allows the rights holder to seek a court order stopping the use, destruction of infringing goods, damages and, in some cases, the infringer's profits. Civil litigation is the avenue for substantial remedies, but it requires detailed evidence of ownership, infringement and causation of loss, and the process is slower and more costly than administrative proceedings.
Criminal prosecution and evidence standards
Taiwan intellectual property law includes criminal penalties for counterfeiting trade marks and designs. Prosecution is available for intentional production or distribution of counterfeit goods, and it can result in imprisonment and substantial fines. Criminal prosecution is initiated by the Taiwan Intellectual Property Office or local prosecutors following a complaint from the rights holder.
The evidence standard for enforcement, whether administrative, civil or criminal, requires documentary proof that the applicant owns the registered right, that the defendant has used an identical or confusingly similar mark or design, and that the use is likely to cause confusion or economic harm. For counterfeit goods, evidence of manufacture, distribution and sale is necessary.
For many Italian producers enforcing against counterfeiters in Taiwan, gathering evidence requires hiring local investigators to purchase infringing goods, photograph them, test them for authenticity and document the chain of sale. This evidence is then submitted to the appropriate enforcement body. The cost and time required mean that producers typically prioritise enforcement against high-value or high-volume infringements.
Online marketplace takedowns and platform enforcement
The majority of counterfeit goods are now sold through online marketplaces rather than through traditional retail or wholesale channels. Taiwan-based and international platforms operate takedown procedures for intellectual property infringement: a rights holder notifies the platform with evidence of counterfeiting, and the platform removes the listing and suspends the seller account.
These platform procedures are faster and cheaper than traditional enforcement but they do not yield damages or criminal prosecution. A takedown does not prevent the seller from relisting under a different identity or moving to another platform. Platforms vary in their response times and in the quality of evidence they require before action.
Italian producers should register with platform intellectual property notice systems and maintain evidence of prior takedowns. A pattern of repeated infringements by the same seller or account can lead to permanent suspension, but this requires persistent monitoring and reporting.
Common questions
My brand is well-known in Europe and the world. Does that protect it in Taiwan without registration?
No. Taiwan is a first-to-file jurisdiction where rights flow from registration, not reputation. An unregistered brand, however famous globally, has no legal protection in Taiwan. If a third party files your brand name before you do, they will own the rights. File early, preferably before market entry or distributor appointment.
What happens if someone has already registered my brand in Chinese characters?
You have limited options. Within a specified window after registration, you can file an administrative challenge to cancel the registration on grounds of bad faith or conflict with your prior rights. Outside that window, you can negotiate to purchase the registration from the holder. A contested cancellation can be expensive and uncertain. This is why filing your Chinese trade mark simultaneously with your Latin trade mark is the best precaution.
I showed my new furniture design at a European trade fair in January. Can I still file for design protection in Taiwan in February?
No. Taiwan operates absolute novelty. Any prior public disclosure, including at a trade fair, a catalogue, a website or a marketing event, forfeits protection. The design must be filed before any disclosure. If you intend to exhibit a product in Europe before filing in Taiwan, file the design protection in Taiwan first.
My region in Italy produces wine with a protected geographical indication in Europe. Can I use that geographical indication on products I sell in Taiwan?
Only if the geographical indication is also registered in Taiwan. Protection does not automatically cross borders. In Taiwan, a geographical indication must be protected through a collective mark or certification mark filed by the regional consortium or producer body. Individual producers cannot file for geographical indication protection. Your regional consortium or producers' association must initiate a Taiwan registration.
I discovered a counterfeit version of my product being sold on a Taiwan-based marketplace. What is my first step?
Purchase evidence of the counterfeit listing, including photographs, product specifications and seller details. Report the infringement to the online platform using its intellectual property takedown procedure. Simultaneously, consider consulting a Taiwan intellectual property adviser about whether the infringement merits customs recordal, administrative proceedings or civil litigation. Platform takedowns are fast but do not yield damages; formal enforcement is slower but allows stronger remedies.
Where to check the current position
- Taiwan Intellectual Property Office, Ministry of Economic Affairs
- Customs Bureau, Ministry of Finance
- Taiwan District Courts (civil intellectual property jurisdiction)
These guides are general information, not legal, tax or investment advice. Rules and figures change: check the current position with the bodies named above before you act.
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