According to the Article 42, a transfer of trademark right shall have no locus standi against any third party unless it is entered in the Register by the Registrar Office. It means the transfer of trademark right in Taiwan adopts “registration antagonism” instead of “registration effectiveness”. Therefore, if the transfer of trademark right is not recorded in the TIPO, it does not render the right to defend against the claims of a third party though the transfer of the trademark right is effective between the trademark owner (assignor) and the assignee.
In the paragraph “A transfer of trademark right shall have no locus standi against any third party” of the Article 42, the “third party” means the one who has legitimate interests and alleges the disputes of non-recordation of the transfer of trademark right. It applies to the disputes among the interested parties for the matters of transfer, license or pledge of trademark right. Since the trademark right is kinds of intangible assets, it is important to ascertain the ownership by “recordation”. Therefore, the Article 42 is for protecting the third party who has the act of trade with the trademark owner. If the third party is a trademark infringer who has no legitimate interests on the trademark right, he/she cannot argue that the trademark owner has no locus standi against any third party because of no recordation of the transfer of trademark right up to the TIPO.
Source: TIPO’s website:
http://www.tipo.gov.tw/ct.asp?xItem=364730&ctNode=7050&mp=1
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
