Importing products from overseas and selling them domestically through an e-commerce platform—Shopee—under an exclusive distribution agreement with a foreign supplier, you later encounter other domestic sellers offering the same products. Can you request that they take down their listings? How can you protect your exclusive distribution rights? Jin Rui Trademark Office’s professional trademark agents analyze this issue from two key perspectives: trademarks and contracts.
1.How are trademarks protected in different countries?
Trademarks are based on the principle of territoriality!
In countries around the world, trademark rights are protected based on the principles of registration and territoriality. In general, when a trademark is registered in one country, it is only protected within that country’s territory, except for well-known trademarks or marks. Trademark rights cannot be claimed in other countries without registration there. Therefore, in order to market and sell products in a foreign market, it is necessary to obtain trademark registration in that country. Securing local protection first helps prevent both infringement of others’ trademark rights and unauthorized use of your own.
When importing products as an agent from overseas, it is advisable to first check whether the brand name has already been registered as a trademark in Taiwan, or whether the original manufacturer has already registered the trademark in Taiwan.
Only with trademark registration in Taiwan can exclusive protection be granted.
Therefore, other companies can use the same brand name with a different logo design and still sell products under that name, unless the brand has achieved the status of a well-known trademark.
2.Has the original manufacturer registered the trademark in Taiwan?
If the original manufacturer has applied for trademark registration in Taiwan, it can prevent others from using the same brand name with a different logo design on their products.
For example, if a third party commissions another manufacturer to produce products using the same brand name or identical logo, it is essentially counterfeit.
It makes no difference whether the logo was legally used in another country—once it is imported into Taiwan, the same rules apply.
As long as the trademark is registered, it is exclusively for use by the original manufacturer.
However, parallel imports (commonly known as “grey market goods”) cannot be prevented. In other words, if the products are originally sold by the manufacturer, others can still purchase and resell them.
This is due to the principle of “exhaustion of rights”—once the original manufacturer has sold the product and profited from it, they can no longer assert trademark rights over that specific item.
(Quoting from the Taiwan Intellectual Property Office website:
“When goods bearing the trademark are imported from abroad with the consent of the trademark owner or an authorized party, it does not constitute an infringement of trademark rights.”
— Refer to Civil Judgment No. 1, Intellectual Property Court, 2012)
3.If the original manufacturer has not registered the trademark in Taiwan, is there any other Taiwanese or foreign company that has already registered the same trademark?
If the original manufacturer has not registered the trademark in Taiwan, it is important to check whether another individual or company has already registered the trademark in Taiwan.
Things can get complicated!
At this point, you can join forces with other Taiwanese sellers and take action based on Article 30, Paragraph 1, Subparagraph 12 of the Trademark Act regarding bad-faith trademark registration by:
• Submitting a third-party opinion during the application period, or
• Filing an opposition within three months after the registration is granted, or
• Requesting an invalidation within five years after the registration is granted.
Alternatively, a simpler approach is to have the original manufacturer apply for trademark registration in Taiwan and initiate cancellation procedures against the existing trademark.
Feel free to consult and recommend Jin Rui Trademark Office for professional assistance.
4.After obtaining an exclusive distribution agreement, what measures can be taken to protect your rights?
The benefits of exclusive authorization!
After reading the above points, it might seem like trademark registration doesn’t offer much protection.
But don’t worry—let’s now talk about exclusive authorization.
If you’ve secured an exclusive distribution agreement, its true value lies in the fact that the original manufacturer will include specific clauses granting you exclusive rights to sell the product. So, to all the sharp-eyed sellers eyeing hot overseas products—you’re a visionary entrepreneur, and you deserve stronger protection.
It is recommended that you propose to the manufacturer that, after trademark registration, they apply for exclusive authorization registration with the Taiwan Intellectual Property Office.
This offers two major benefits:
-If counterfeit products appear,Only a seller who has been exclusively authorized can act on behalf of the original manufacturer to protect rights in Taiwan—in other words, they have the legal standing to file a lawsuit in Taiwan on the manufacturer’s behalf.
-Even the original manufacturer themselves cannot take legal action directly.Only a company that has been exclusively authorized is allowed to use the trademark!
Please note: if the licensing agreement is not registered with the Intellectual Property Office, and the trademark is later transferred to a third party, that third party is not obligated to recognize the original licensing arrangement. In other words, if the trademark is sold to someone else, the new trademark owner can legally deny any prior agreements. Therefore, it is strongly recommended to ensure that you obtain registered authorization.
※ Rights protection = safeguarding legal rights
※ Exclusive authorization: This refers to the situation where the rights holder (e.g., of a patent or trademark) grants exclusive rights, thereby excluding even themselves from exercising the right or licensing it to others.
Example: If Party A grants exclusive trademark rights to Party B, then Party A can no longer use the trademark or authorize it to anyone else. Only Party B can exercise those rights—this is what’s called exclusive authorization.
5.Does the contract clearly define the rights of exclusive distribution?
The contract should clearly state everything in black and white!
Before signing a contract, you need to draft one; and before drafting, you must first determine what type of contract it is.
Is it a contract that allows you to distribute the product, but not use the trademark?
Does the manufacturer actually own the trademark rights?
What are the rights and obligations both parties are taking on through this agreement?
If you’ve signed an exclusive distribution contract but later find that other domestic e-commerce sellers are also selling the same product, how do you protect your exclusive distribution rights?
It’s recommended to sign a well-defined agreement with the manufacturer that states, for example, any sales above a certain quantity must go through the exclusive distributor. You can also include clauses that benefit you—ensuring that the exclusive deal actually brings value to your business.
For instance, non-exclusive distributors may not be eligible for warranty or exchange services from the manufacturer. You can even promote these advantages to encourage customers to buy from the exclusive distributor.
For this part, it’s best to consult a lawyer to ensure peace of mind.
6.If your rights are infringed upon by a competitor on an e-commerce platform, how can you protect yourself?
Based on the experience of our previous clients on the Shopee e-commerce platform,
sellers who are repeatedly reported may have their entire store removed—including all their product listings and customer reviews.
Having a trademark registration certificate will be highly advantageous for us!
Therefore, it’s true that some sellers register the trademarks of overseas manufacturers to prevent others from undercutting prices.
While the reasoning is understandable, this approach is not recommended.
We hope the above information helps those in need to better understand how to handle challenges that may arise when operating in the e-commerce space, and how to ensure your rights are properly protected.
Starting a business is never easy—when it comes to professional matters, it’s best to leave them to the experts.
For all things trademark-related, consult the Trademark Specialists.
Feel free to reach out and recommend Jin Rui Trademark Office.
