Whether a branch office can be the applicant of a trademark application is an important issue in practice, especially for foreign companies, which are deeply concerned about whether applications for trademark registration can be filed in the name of a branch office in Taiwan. The Intellectual Property Office (IPO) of Taiwan previously approved several trademark applications filed in the name of a branch office, but has changed its practice. Under current practice, the IPO holds that unless a branch company has independent juristic personality under the laws of the country where such branch office is established, the relevant trademark applications can only be filed under the name of its head office.

In its announcement dated 8 June 2011 (Ref. No. Zhi-Fa-Zi-10018600350), the IPO specifically provided explanations relating to patent or trademark applications filed by foreign companies. According to the IPO, the patent/trademark applicant is the party which files the patent/trademark application with the IPO. As the applicant is an entity with relevant rights/obligations, it must have independent personality as a natural person or juristic person. A foreign company can file a patent/trademark application in Taiwan, and no prior approval or permission is required. However, because the branch office of a foreign company in Taiwan has no independent juristic personality, if a patent/trademark application is to be filed, it has to be made in the name of the foreign head office.

Meanwhile, the IPO added, different countries have different regulations regarding whether a branch office established in a place outside the country where the head office is incorporated has independent juristic personality. If a branch office is deemed to have independent juristic personality pursuant to the domestic laws of the country where it is established, it can be a patent/trademark applicant. If a patent/trademark application is filed in the name of such branch office in Taiwan, a notice will be given to inform the branch office that it can choose to change the applicant to its foreign head office, or to remain the applicant itself. In the case of the latter, the branch office will have to provide either evidencing documentation to prove that it has independent juristic personality in the place of incorporation or a declaration that it has independent juristic personality in the place of incorporation.

Under the new practice, if the declaration provided by the applicant does not comply with the existing laws of the relevant countries or if the IPO deems it necessary, the applicant will be asked to provide evidencing documentation to prove that it is an independent juristic person pursuant to the domestic laws of the place of incorporation. If no such documentation is provided in time of if the documentation provided is not sufficient to prove such fact, the applicant of the relevant application should still be the head office of the foreign company.