Since Taiwan adopts a first-to-file system for trademark registration, trademark protection is primarily determined by the filing date rather than by prior use. Accordingly, the party that first files an application with the Taiwan Intellectual Property Office (TIPO) secures priority over subsequent applicants for identical or similar marks covering identical or similar goods /services. As the filing date plays a pivotal role that determines whether applicants may exclude any later-filed identical or similar marks, securing an earlier filing date is an important aspect of devising trademark strategies in Taiwan.

As Taiwan is not a member of the Madrid System, foreign applicants cannot designate Taiwan through an international registration filed with WIPO. Instead, a national application must be filed directly with the TIPO. For foreign applicants seeking to rely on an earlier foreign filing date, claiming priority under Article 20 of the Taiwan Trademark Act becomes important.

Considering that the TIPO’s approach in determining the scope of priority claims is increasingly restrictive, this article examines recent developments in local practice and the possibility of restoration to status quo ante in the event that the statutory priority period is missed.

Article 20, Paragraph 1 of the Taiwan Trademark Act stipulates:

“An applicant who has duly filed an application for trademark registration in a country which has reciprocal recognition of priority rights with the ROC, or filed such application with a member of the World Trade Organization (WTO), may claim a right of priority, for the purposes of registering the same trademark in the ROC for some or all the same goods or services, within six months from the day following the date of filing of the first such application.”

This paragraph establishes three essential requirements:

(1)    A valid first application in a qualifying jurisdiction
(2)    Filing in Taiwan within six months from the first filing date
(3)    Identity of the trademark and the designated goods or services

Regarding the expression “some or all the same goods or services,” the TIPO’s Notes on Claiming Priorities further clarify that where the goods or services designated in the Taiwan application exceed the scope of the first application, priority cannot be claimed for the portion exceeding the original scope. The Notes further address this issue as follows:

For example, if the first application designates “cosmetics,” and a later application designates “lipstick,” lipstick is already included within the broader term “cosmetics.” Therefore, the later application cannot be considered the first application for lipstick, and priority cannot be claimed based on the later application.

1.      “Whisky” vs. “distilled spirits”

In one recent case, an identical trademark had been filed in Australia, the United Kingdom, and the European Union in 2019 for “whisky.” In 2025, the same applicant filed the same mark in the United States designating “distilled spirits.” A Taiwan application was subsequently filed claiming priority based on the U.S. application.

However, the TIPO considered “distilled spirits” a broader concept encompassing “whisky.” Because whisky had already been the subject of prior filings in 2019, the TIPO concluded that the U.S. application for distilled spirits could not be treated as a first application. As a result, priority could not be claimed for whisky in Taiwan.

The TIPO required the applicant to amend the identification to “U.S. priority: Distilled spirits, except whisky; without priority: whisky.” 

2.      Amendments to the first application

Generally, where the first application had been amended in the country of origin, applicants claiming priority in Taiwan are required to submit priority documents reflecting the amended version. However, recent practice suggests that even amendments accepted by foreign trademark offices may lead to difficulties in Taiwan if such amendment are found to broaden the scope of the goods or services.

In one recent matter, the original U.S. application designated:

“Business management services, namely, maintaining, customizing, and providing online workflow management software to ….”

The identification was later amended before the USPTO to:

“Business management services.”

Although the applicant submitted documentation reflecting the amendment process, the TIPO determined that the amended wording broadened the original scope. Accordingly, the amended identification was not accepted for claiming priority. This suggests that the TIPO independently assesses whether the amendment exceeds the scope of the original filing, regardless of its acceptance by a foreign office.

3.      “Human diseases and autoimmune diseases” vs. “cancer and immuno-oncology”

In another case, a Taiwan application claimed priority from a 2022 U.S. filing covering:

“Pharmaceutical preparations and substances for the treatment of human diseases, animal diseases, cancer, autoimmune diseases, and infectious diseases ….”

The TIPO identified an earlier 2019 U.S. application for the identical mark covering:

“Pharmaceutical preparations for the prevention and treatment of cancer.”

The TIPO considered that “human diseases” conceptually include cancer, and that autoimmune diseases may overlap with oncology-related conditions in medical classification. On this basis, the TIPO concluded that the 2022 identification was not the first application for those goods. The matter was ultimately resolved by adding a limiting clause to the identification, specifically excluding diseases related to cancer and immuno-oncology.

4.      Restoration to status quo ante

Given the importance of the priority date, missing the statutory six-month deadline may have significant consequences. However, Article 8, Paragraph 2 of the Taiwan Trademark Act stipulates that “where an applicant has failed to comply within the statutory period by reason of an act of God or any event not attributable to the applicant, he/she may apply for restoration to the status quo ante, within thirty days from the day following the date on which the cause vanishes, by submitting a written statement to clarify the reason. No application for restoration may be made upon the failure to comply within the statutory period for more than one year.”

For example, if an applicant is unable to submit the priority document in time due to delay by the foreign trademark office, restoration of rights may be available upon submission of supporting evidence, such as:

Whether a delay is considered beyond the applicant’s control is determined on a case-by-case basis, based on the totality of the circumstances and evidence presented.

5.      Conclusion

Recent practice suggests that the TIPO is applying an increasingly restrictive approach when examining applications claiming priority. Most notably, examination is not limited to formal examination; it increasingly focuses on the scope and concept of the goods and services. Accordingly, applicants who claim priority when filing trademark applications in Taiwan should carefully evaluate the scope of goods and services in the first application.

Continued observation of the TIPO’s practice will be necessary, but the current trend highlights the importance of strategic foresight and precise drafting when claiming priority in Taiwan.