Trademark
I. What Happens When a Ground for Rejection Disappears During a Registration Challenge in Taiwan?
When managing global trademark portfolios, understanding the precise timing for assessing trademark validity is critical. A frequent question arises under Taiwan trademark practice: If a trademark initially lacked distinctiveness at the time of registration, but subsequently acquired distinctiveness (secondary meaning) through intensive use BEFORE the Taiwan Intellectual Property Office (TIPO) rules on the opposition or invalidation decision, should the registration still be revoked?
The Supreme Administrative Court of Taiwan addressed this exact issue in its landmark Judgment No. 111-Shang-463, providing clear guidance for international brand owners.
1. Inherent vs. Acquired Distinctiveness
Under Article 29, Paragraph 1 of the Taiwan Trademark Act, a trademark must possess distinctiveness to be registered. Distinctiveness is categorized into two types:
- Inherent Distinctiveness: The mark is inherently capable of identifying the source of goods or services from the outset.
- Secondary Meaning: A mark that initially lacks inherent distinctiveness can become registrable if, through actual marketing and extensive use in commerce, the relevant consumers come to recognize it as a brand.
The core dispute lies in the timeline. If a mark transforms from "non-distinctive" to "distinctive" after it is approved for registration but before TIPO issues a formal decision on a third-party opposition or invalidation action, which point in time dictates its validity?
2. The "Time of Registration Decision" Takes Precedence
Historically, the registrability of a trademark was determined based on the conditions present at the time of application. However, recognizing that trademark examination takes time and circumstances can change, the Trademark Act was amended. According to the legislative intent behind Articles 29 and 30 (grounds for refusal of trademark registration), the standard benchmark is now the time when TIPO officially approves the mark registration, rather than the application date.
Article 30, Paragraph 2 explicitly isolates specific grounds—such as geographical indications for wines/spirits, well-known trademarks, bad-faith registrations, or unauthorized use of another's name—where the time of application remains the strict statutory benchmark to protect prior rights and public policy. For general grounds like distinctiveness, the date of the registration decision governs.
3. Opposition vs. Invalidation: Why the Timeline Diverges
Taiwan’s trademark system provides two primary mechanisms for the public to challenge a registered mark: Opposition and Invalidation. The Supreme Administrative Court emphasized that the law treats these two mechanisms differently regarding changing circumstances.
(1) Opposition (Filed within 3 months of publication):
An opposition must be initiated within a strict three-month window following the trademark publication. Because this timeframe is very short , the impact on the public and the interests of the trademark owner is relatively minimal. Therefore, the court ruled that the critical date for assessing distinctiveness in an opposition remains the time of the registration decision.
Even if a brand owner demonstrates that the mark acquired distinctiveness during the opposition proceedings, TIPO must still sustain the opposition and revoke the registration if the mark lacked distinctiveness when it was approved.
(2) Invalidation (Filed within 5 years of publication):
Conversely, an invalidation action can be brought up to five years post-registration. Recognizing that a cancellation after years of commercial use could severely disrupt market order and harm the brand owner, Article 60 provides a safe harbor. It states that if the ground for non-registrability no longer exists at the time of the invalidation decision, TIPO may dismiss the invalidation action after balancing public interest and the parties' benefits.
The Court explicitly confirmed that this safe harbor applies exclusively to Invalidation actions and cannot be applied to Opposition cases. The Court noted that this distinction is purely based on timing: invalidations challenge long-standing rights, whereas oppositions deal with newly registered marks. Therefore, the legislature intentionally withheld this safe harbor from opposition proceedings to ensure a rigorous, immediate check on newly registered marks.
4. Summary: Timeline for Assessing Grounds for Non-Registrability
The relationship between the timing of a non-registrability ground and its corresponding critical assessment date under Taiwan practice is summarized below:
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5. Key Takeaways for International Brand Owners:
1. Compile Defensive Evidence Early: If your trademark risks being challenged for a lack of inherent distinctiveness, compile and submit robust evidence of acquired distinctiveness during the initial examination phase, before the registration decision is made.
2. The Opposition Vulnerability: Relying on intensive commercial use after registration will not cure a lack of distinctiveness if a third party files an opposition within the initial 3-month window. In such scenarios, the court and TIPO will strictly access whether the mark was distinctive as of the date it was approved for registration.
II. Taylor Swift Files Trademark Applications for Her Voice and Likeness: A New Frontier in Celebrity Brand Protection in the Era of AI Deepfakes in Taiwan
The rapid advancement of generative artificial intelligence (AI) and deepfake technology has created unprecedented intellectual property challenges for public figures and global brands.
According to recent media reports, Taylor Swift has taken steps to protect her voice and iconic stage persona through trademark registration, seeking to establish a legal “digital identity defense barrier” against unauthorized AI-generated imitations.
In Taiwan, both sound marks and trademarks consisting of a person’s image may be registered under the Trademark Act. As AI-generated impersonation becomes increasingly widespread, this strategy may provide celebrities and brand owners with a powerful tool for protecting their identities and commercial value. However, several practical considerations and potential risks must also be carefully evaluated.
This article explores the advantages and limitations of protecting a celebrity’s voice and likeness through trademark registration under Taiwan trademark practice.
1. Advantages of Registering a Celebrity’s Voice and Likeness as Trademarks
Traditional copyright protection primarily focuses on existing creative works, such as sound recordings, photographs, or audiovisual works. However, if AI technology merely imitates a celebrity’s voice, tone, speaking style, or appearance without reproducing an existing copyrighted work, copyright protection may fail to reach such conduct.
Accordingly, trademark protection may serve as an important complementary strategy for protecting celebrity brands in the AI era.
(1) Strong Criminal Deterrence and Enhanced AI Risk Management
Under Taiwan’s Trademark Act, trademark infringement may trigger criminal liability when the statutory requirements under Article 95 and related provisions are satisfied. This criminal enforcement mechanism provides a significant deterrent effect against unauthorized commercial exploitation.
More fundamentally, trademark registration increases the likelihood that AI developers, online platforms, and commercial partners will conduct rights clearance and risk assessments before using a celebrity’s voice or likeness.
A registered trademark also provides a stronger legal basis for rights holders to demand cessation of unauthorized use and to request removal of infringing content.
(2) Effective Protection Against “Celebrity Endorsement Scams”
The fundamental purpose of trademark law is to prevent confusion regarding the source of goods or services.
For example, if fraudsters use generative AI to imitate Taylor Swift’s voice and appearance on social media and promote a product by falsely claiming, “Hi, I’m Taylor Swift. Click this link to purchase this discounted water bottle”, the trademark owner may argue that such unauthorized use creates a likelihood of confusion among relevant consumers.
Based on trademark rights, the rights holder may submit infringement notices to online platforms, request removal of the unauthorized content, and protect the goodwill associated with the celebrity’s brand.
2. Potential Concerns and Risks of Trademarking Celebrity Voices and Likenesses
Although trademark registration provides a promising new defensive strategy, trademark law is fundamentally designed to maintain fair competition and commercial order. Therefore, several practical limitations must be considered.
(1) Limitations in Cross-Industry Infringement Claims (Likelihood of Confusion Requirement)
Trademark applications are based on the Nice Classification system, meaning applicants must designate the specific goods or services for which protection is sought, such as entertainment services, recording equipment, clothing, and other relevant categories.
However, if an AI user misappropriates a celebrity’s voice or likeness in connection with goods or services completely unrelated to the celebrity’s commercial activities (for example, industrial components or agricultural chemicals), whether such use gives rise to “a likelihood of confusion among relevant consumers” or in the case of a well-known mark, “dilution of the trademark’s distinctiveness or reputation” must be carefully assessed on a case-by-case basis.
Accordingly, there remains a risk that a court may ultimately determine that the legal requirements for trademark infringement have not been satisfied.
(2) Risk of Cancellation Due to Non-Use After Three Years
Because the primary purpose of such trademark strategies is often defensive protection against AI misuse, rights holders may consider filing broad defensive trademark applications covering goods and services that they do not currently intend to commercialize.
For example, a celebrity may register a voice or likeness trademark for various categories, such as:
• Class 30: tea products;
• Class 14: jewelry;
• Class 16: paper products as part of a broader brand protection strategy.
However, under Taiwan’s Trademark Act,a registered trademark that remains unused for a continuous period of three years without justifiable reason may be subject to a non-use cancellation action filed by any interested party with the Taiwan Intellectual Property Office (TIPO).
Therefore, purely defensive trademark registrations without genuine commercial use may remain vulnerable to cancellation proceedings.
However, under Taiwan's Trademark Act, a registered trademark that remains unused for a continuous period of three years without justifiable reason may be subject to a non-use cancellation action filed by any interested party with the Taiwan Intellectual Property Office (TIPO).
3. Conclusion
In today’s rapidly evolving technological environment, strategically registering a celebrity’s “voice” and “signature likeness” as trademarks has increasingly become an important legal tool for brand protection in the AI era.
With careful planning by experienced trademark professionals, early defensive trademark strategies can help celebrities and businesses maintain greater control over their identities, reputations, and commercial value in the digital landscape.
Should you or your clients be considering whether a voice, image, or other personal brand asset should be protected through trademark registration, our professional team would be pleased to assist in evaluating the appropriate trademark strategy and developing a tailored intellectual property protection plan.