New Amendment to Taiwan Trademark Act: Accelerated Examination Available
Date: 12 May 2023 (Updated on 6 June 2023)
【Volume 110】
The partial draft amendment to the Taiwan Trademark Act has passed the third reading on May 9, 2023 by the Legislative Yuan1. On May 24, 2023, the Taiwan Office of the President also published the amendment on the Presidential Office Gazette. Several provisions favorable to trademark holders are introduced in the amendment, which are summarized as follows:
1. Introducing Accelerated Examination for Applications for Trademark Registration
According to the new Paragraph 8, Article 19 of the Trademark Act, accelerated examination for applications for trademark registration is now possible for applicants who need to quickly obtain the right (e.g., when there is infringement litigation involved or when products have launched). Applicants may submit facts and reasons for acceleration, pay a NTD 6,000 fee, and have the examination period shortened to 2 months. Acceleration requests are not available for cases which the Intellectual Property Office (IPO) has issued an official letter requesting an amendment or a response from the applicant or an advance notice of reasons for disapproval.
2. Introducing Trademark Agent Management System
The new Subparagraph 2, Paragraph 2 and Paragraph 3, Article 6 of the Trademark Act propose a system for managing trademark agents, allowing those equipped with professional knowledge of trademarks and who have completed registration and training to handle trademark matters as trademark agents.
3. Stipulating Circumstances that are Nominative Fair Use and Not Infringement
Expressly stipulated in the new Subparagraph 2, Paragraph 1, Article 36 of the Trademark Act is that “using others’ trademark to refer to others’ goods or services, in a manner that is honest and conforms to business transaction practices, to indicate the purpose of one’s own goods or services” is considered “nominative fair use” and not infringement.
For instance, a mobile phone repair shop using a sign that shows the trademarks of various mobile phone brands to indicate the services it provides does not constitute trademark infringement.
4. Simplifying Customs Detention Process
The amended Paragraph 2, Article 75 of the Trademark Act obviates the need for trademark holders to identify the infringement at customs in person when an article is deemed likely to infringe the trademark holder’s right. As long as the trademark holder has completed the registration for “advice protection of trademark right” at the Taiwan Customs, once an article suspected of infringement is found, the trademark holder may then determine whether there is infringement based on the photos of the article on the customs’ online platform.
Next in Line
In addition, the IPO proposed another set of partial draft amendment to the Taiwan Trademark Act stipulating matters regarding the examination of opposition and invalidation and processes of remedies thereof, trademark exhaustion, and requirements for registering trademarks with functionality, etc. Our introduction will follow once it passes the third reading by the Legislative Yuan.
