Author: Jamie J. Yang and Rose Wang

Foreign brand owners entering Taiwan through a local distributor sometimes allow the distributor to register their trademarks under the distributor’s own name. The logic is straightforward: the distributor handles local filings; the brand owner saves on upfront cost and administrative effort. This shortcut is particularly common in industries where the local partner’s role goes well beyond mere distribution — in PC and mobile gaming, for instance, the local partner typically handles platform clearance, language localization, server setup, and promotional efforts, and letting them manage trademark registration feels like a natural extension of that relationship. The license agreement preserves the brand owner’s intellectual property rights on paper and obligates the distributor to transfer the registrations back on exit.

photo by ChatGPT

That procedural convenience may be real but the benefit is modest — and the economics of the trade-off look very different once the distributor turns adverse.

When the Ex-Distributor Goes Rogue

The arrangement breaks down when the distributor refuses to execute the transfer at the end of the relationship. In a more aggressive version — typically triggered when the brand owner decides to enter the Taiwan market directly or through a new partner — the ex-distributor deploys its registered trademarks as offensive weapons, filing an infringement action against the brand owner, the incoming distributor, or both.

This exposes a structural weakness in the underlying arrangement. A contractual right to demand transfer and a registered trademark right are not equivalent instruments under Taiwan law. The registration is immediately enforceable against third parties; the contractual claim is not self-executing. The brand owner must obtain a final judgment to compel transfer of trademark title. Until then, the distributor remains the holder of record and is presumed to be the trademark owner. However clearly the license agreement is drafted, it does not by itself alter that trademark owner status.

Certain categories of agreements can be notarized before a Taiwan notary and become directly enforceable without litigation — notarization is a well-established way to reduce enforcement costs in many commercial arrangements. A trademark transfer obligation, unfortunately, is not among the permitted categories.

Short of restructuring the arrangement entirely, the parties can build in a practical safeguard at signing: have the distributor pre-sign the trademark transfer form at the time the license agreement is executed, together with a power of attorney authorizing the brand owner to complete the filing date and submit the form on the distributor’s behalf when needed. To reduce the risk of the distributor later contesting the authenticity of its signature, the power of attorney itself can be notarized.

The Better Path: Register Directly

The cleanest solution is for the brand owner to hold the Taiwan registration in its own name from day one, and this is more accessible than foreign companies often assume.

A foreign company can register as a Taiwan trademark owner directly under its head office name. There is no requirement that the registrant be a Taiwan entity or maintain a local presence. Trademark matters can be handled through an appointed Taiwan trademark agent, which is the standard route for applicants without local operations. Where the foreign company has already established a Taiwan branch office, appointment of a trademark agent is not strictly required, and the branch’s registered address may serve as the address of record.

Beyond procedural feasibility, holding the registration directly carries a commercial benefit that is especially visible in gaming — and that industry is where this firm has encountered the distributor trademark trap most often in practice. Game publishing arrangements are unusually fluid: titles migrate across platforms and between retail and digital storefronts, sometimes within a single product lifecycle. A developer that launches through a local partner may, within a few years, want to publish directly through a global digital storefront, restructure its regional operations, or switch partners entirely. Each of those moves becomes harder if the outgoing partner holds the trademark registration. Holding its own Taiwan trademark from day one gives the brand owner the flexibility to adapt without needing a former counterparty’s cooperation to do so.