April 10, 2025  Copyright ©️ 2025 by goldkeen International Patent & Trademark Joint Office



 

Trademark rights are a form of intangible property and may be "inherited" or "transferred."
According to Article 42 of the Trademark Act, a transfer of trademark rights must be registered with the competent trademark authority; otherwise, it cannot be asserted against third parties.

There are various reasons for the transfer of a trademark, which may include agreement, inheritance, compulsory execution, court judgment, or other legal provisions.

Even if the transfer occurs based on a contract or other legal relationship between the assignor and assignee, and does not become invalid due to lack of registration, it cannot be enforced against third parties who claim a legitimate interest in the trademark if the transfer has not been registered.

 

Types of Trademark Transfers

  1. Transfer by Agreement:
    The trademark owner and the assignee reach a mutual agreement regarding the transfer of rights and payment terms.
  2. Transfer by Gift:
    The trademark owner donates the trademark to the assignee, who acquires the rights free of charge.
  3. Transfer by Inheritance:
    If the trademark owner is a natural person and passes away, the rights are inherited by the legal heir(s).
  4. Transfer through Corporate Merger:
    When a company undergoes a merger, its trademark rights are transferred to the surviving entity.
  5. Transfer by Court Judgment or Statutory Means:
    Trademark rights may be obtained through a final court judgment or through legal procedures such as public auction.

 

Trademark Transfer Documentation

To complete a trademark transfer registration, the primary required documents include a transfer application form and supporting proof of transfer.

The type of supporting documents required will vary depending on the type of transfer:

Transfer by Agreement:
Trademark assignment contract or other supporting documentation.

Transfer by Gift:
Gift agreement.
If the assignor is a natural person, a tax clearance certificate issued by the taxation authority must also be provided.

Transfer by Inheritance:

  • Death certificate of the original trademark owner
  • Full household registration transcript of the deceased (with a declaration by the assignee confirming it is complete)
  • Proof of trademark ownership or other inheritance documents
  • Certification issued by the taxation authority

Transfer Following Company Merger:
Merger certificate registered with the competent authority.

Transfer by Court Judgment / Auction:
A copy of the final court judgment or court-issued auction certificate; in the case of auction, the successful bidder may apply for the transfer registration independently.

Pre-Transfer Checklist

Before acquiring another party’s trademark rights through purchase or other means, the following items should be carefully verified:

For General Trademarks:

  1. Confirm ownership through the official trademark register.
  2. Check whether the trademark has been canceled or publicly revoked.
  3. Determine if there are any existing license or pledge registrations.
  4. Verify whether there are any prohibitions, legal restrictions, or ongoing disputes involving the trademark.
  5. Review whether the trademark owner holds other pending or registered trademarks that are identical or similar, and assess whether those should also be transferred as part of the transaction.

 

Co-Owned Trademarks

According to Article 46 of the Trademark Act:
The licensing, sub-licensing, transfer, abandonment, pledge, or transfer/pledge of a co-owner's share of a co-owned trademark requires the unanimous consent of all co-owners.

Article 28 (Paragraph 1):
The transfer of an application right for a co-owned trademark, or of a co-owner’s share thereof, also requires unanimous consent.
However, transfers by inheritance, compulsory execution, court judgment, or other statutory means are exempt from this rule.

Article 28 (Paragraph 2):
Abandonment of a co-owned trademark application right requires consent from all co-owners.
However, individual co-owners may abandon their respective shares without unanimous consent.

 

Additional Notes

  1. If both parties to the transfer are legal entities (corporations), they should not share the same legal representative, and the assignor’s signature must match the one on record with the trademark office.
  2. If the trademark owner is a dissolved company, the liquidator must sign the transfer agreement on behalf of the company, and a court-filed document confirming the liquidator’s appointment must be attached.
  3. If any supporting document is in a foreign language, a Chinese translation must be provided.
    If a copy is submitted, a statement verifying its consistency with the original must be included.

 

Source: Taiwan Intellectual Property Office (TIPO)

 

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