According to Article 49.2 of the Trade Mark Act, in a trade mark dispute, such as an opposition, invalidation or non-use cancellation action, the IP Office is required to serve a copy of the brief/counterstatement filed by each party on the other party for a response. Under such procedure, the parties can alternately submit observations. It is only when the procedure comes to an end that the IP Office will start examining the case and render a decision.
However, if the observations filed by the parties are repetitive and the facts in the case are clear, allowing the parties to continue filing observations alternately will unavoidably delay the proceeding. The IP Office thus promulgated the Notice on Trademark Dispute Examination Procedure on September 1 2015 as a guideline to accelerate the examination process.
Key points of the Notice are:
1) Where the observations submitted by either party are substantially the same as those filed or the issues involved have been addressed by both parties, the procedure of allowing the parties to alternately submit observations shall stop. If the evidence of use submitted by either party is found to be fabricated, the procedure can be discontinued on a case-by-case principle, so as not to delay the proceeding.
2) If a suspension of the proceeding is requested due to the need to negotiate, it should be ensured that the request is not a one-sided request. The two parties should specify the period of suspension requested while the Registrar should suspend the proceeding for a reasonable amount of time depending on the circumstances surrounding the case.
3) If a further suspension is requested on the ground that negotiations between the parties are ongoing or additional evidential materials cannot be timely submitted, the Registrar should consider whether the request is justified and whether the parties have been given sufficient time and may reject the request if further suspension will delay the proceeding.
4) Unless there are justified reasons for granting suspension(s), to effectively control the overall examination time, the Registrar should render a decision within two months for opposition and non-use cancellation cases, and within three months for invalidation cases, after the procedure of filing of observations by the parties is terminated.
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Amanda YS Liu |
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