Taiwan: Trademark Act to be revised

Taiwan’s IP Office has accomplished a revision of the current Trademark Act and published the draft amendment for public inspection after holding a series of oral hearings. Although it will take a while for the new Trademark Act to come into force, the primary amendments are highlighted below for applicants to preview.

(1) Applicants are allowed to formally request the IP Office to expedite examination of trademark cases.

(2) ‘Fair use’ is clearly defined to include “descriptive fair use” and “nominative fair use”

(3) The ‘international exhaustion of trademark right’ doctrine is embraced by the current Trademark Act, under which a registered trademark holder may not claim his right other than preventing the trademarked goods from deterioration or damage after they are circulated in the market. The draft amendment makes it more manifest that the ‘international exhaustion of trademark right’ doctrine does not apply when there are refurbished or processed goods circulating in the market.

(4) The IP Office will set up a committee specifically responsible for the re-examination of formally rejected trademark applications and the examination of invalidation/cancellation cases. The committee will be composed of three or five examiners. While re-examination cases are basically reviewed in written form, oral hearings may be held during the proceedings of invalidation/cancellation cases.

(5) In the case of filing a request for re-examination of a trademark application, or an invalidation/cancellation action against a registered trademark, the following procedures are allowed only before the committee issues a decision: (i) filing a divisional application; (ii) amending an applied-for trademark in a non-material manner; (iii) restricting the scope of the designated goods/services; and (iv) entry of disclaimer.

(6) Since an invalidation action can be filed against a trademark registration at anytime during its duration, the opposition procedure is to be abolished for the sake of judicial economy.

(7) Currently, if the applicant of a trademark application or the losing party of an invalidation/cancellation action is dissatisfied with a decision rendered by the IP Office, they may file an appeal and in turn, an administrative litigation to seek review of the IP Office’s decision. According to the draft amendment, the appellate procedure is to be abolished, while administrative litigation will be replaced by civil litigation. Consequently, instead of filing an appeal, the applicant or the losing party will need to file a civil litigation with the IP and Commerce Court, if intended. The opposing party, not the IP Office, shall be named as the defendant in an invalidation/cancellation action during civil proceedings.

(8) In order to prevent invalidation/cancellation cases from dragging on for too long, the draft amendment provides that no new evidence or grounds can be filed in civil proceedings.

Given that the proposed amendments highlighted in Point 4-8 above will bring about an overhaul change to existing legal infrastructure, it remains to be seen as to whether the IP Office will look for further opinion from the public and propose additional modifications.

 Julia HungPartner, Saint Island International Patent & LawE: siiplo@mail.saint-island.com.tw