Date: 13 May, 2021

【Volume 46】Back in March 2020, we wrote about the Taiwan Intellectual Property Office (IPO) new fast track trademark examination pilot program. Over the past year, the pilot program receives positive feedbacks and the IPO officially launched the trademark fast track examination system on 1 May, 2021.

Advantages of the new fast track trademark examination system

The fast track trademark examination system encourages applicants to utilize the IPO e-filing system and submit all required documents at the time of filing, which would expedite the trademark examination process.

Successes and statistics of the fast track examination pilot program

From 1 May, 2020 to February 2020, the IPO received more than 49,000 applications that comply with fast track examination requirements, and around 58% to 62% of all applications are fast-tracked trademarks. The first action (FA) pendency of a fast-tracked trademark application is 1.4 to 1.6 months faster than that of a regular trademark application. Currently, the average first action pendency for regular applications is about 6-8 months.

The pilot program showed that the fast track examination system significantly reduces the trademark prosecution time. The IPO therefore decided to officially implement the fast track examination system on 1 May, 2021.

How to apply for fast track examination?

Starting from 1st May, 2020, any new trademark application that satisfies the fast track examination requirements shall automatically be subject to fast track examination. The fast track examination does not require a separate application or official fee.

Requirements for fast track examination

1. Electronic filing shall be used;
2. The trademark shall be a traditional trademark (i.e. excluding non-traditional trademark, certification mark, collective trademark and collective membership mark applications);
3. All descriptions of goods or services shall be identical to the standard descriptions in the “IPO recommended terms of designated goods or services” (pre-approved descriptions of goods and services);
4. Specific electronic methods of official fee payment shall be used;
5. If an attorney is appointed, the Power of Attorney shall be submitted together with the application.

If an application meets the requirements 2, 3 and 5, it would be subject to fast track examination since Wisdom uses electronic filing and pays official fee through specific electronic methods.

How do I know if my application is eligible for fast track examination?

Applications that are subject to fast track examination will be displayed as “Fast Track” in the IPO trademark online database 1 month after the application date.

Will a fast track application be easier to be approved than a regular application?

The fast track examination only accelerates the trademark examination and does not change the actual application date of the fast-tracked trademark. The IPO continues to grant trademark rights on a first-to-file basis and the first person to file an application will exclude others from registering a same or similar trademark.

If my application does not fulfil the requirement for the fast track examination system, how can I expedite the examination?

For applicants that have an urgent need to obtain trademark rights but their applications cannot comply with the fast track requirements, the IPO plans to introduce a separate "accelerated examination" system which requires payment of an additional fee.

The latest draft of accelerated examination system was approved by the Executive Yuan and is expected to be sent to the Legislative Yuan for deliberation before the end of 2021.