August 15, 2024 Copyright ©️ 2024 by goldkeen International Patent & Trademark Joint Office

 

 

"I don't want to sign a contract that would restrict me to working with only one agency."
I remember that was what the deputy manager told me at the time.

 

Later, when that deputy manager contacted our firm's business colleague,
it turned out that they were discussing how to deal with the issue of their trademark being hijacked in South Korea.

Although whether or not to sign with an agency and applying for trademarks abroad are two separate matters,
when a company is looking to expand, the devil is in the details,
and it is crucial to pay attention to protecting the rights and interests of the headquarters.

 

When developing a franchise chain or expanding into overseas markets, it is important to note that trademarks follow the principle of territoriality — exclusive rights are only granted in countries where the trademark is registered and protected.

 

The trademark application should be filed by the Taiwan headquarters and should not be assigned to overseas agents.

 

Once an overseas agent obtains trademark rights, at least two major issues may arise:

First, if the overseas agent no longer relies on the headquarters for manufacturing or marketing and instead works with external manufacturers, they would not be considered infringing the trademark.

Secondly, if the overseas agent stops purchasing products from the headquarters, the headquarters would not be able to appoint another agent to sell locally because it would no longer hold the trademark rights in that country.

Generally speaking, issues that can be resolved with money are considered minor.
However, if trademark rights are registered by someone else, it may not seem problematic during the contract period.
But once the contract ends, if the statutory period for filing an invalidation action against another party’s trademark has passed — such as the five-year limit in Taiwan — it becomes extremely difficult to reclaim the rights.

A notable example is the Taiwanese band Sodagreen, which found it very difficult to revoke the "Sodagreen" trademark registered by their former manager’s company, Lin Wei-Zhe Music Studio, because the trademark had already been renewed after ten years, making it too late to challenge.

 

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