1. Taiwan Trademark Act was amended on May 24, 2023 and became effective on May 1, 2024.
This amendment introduces an accelerated examination system, which is a new measure for trademark applicants who need to confirm their rights immediately due to infringement litigation or the urgent necessity of obtaining rights for products already on the market.
According to Paragraph 8, Article 19 of the amended Trademark Act, “When the applicant has an urgent need to obtain rights, he/she may state the facts and reasons, and upon payment of an accelerated examination fee, the Trademark Competent Authority (Taiwan Intellectual Property Office, TIPO) will conduct an accelerated examination.” However, per Article 94 of the same Act, certification marks, collective marks, and collective trademarks, are not eligible for accelerated examination.
- The main points of the above accelerated trademark examination system are as follows:
Time of Request for Accelerated Examination – A request shall be made after the application number is assigned and before the first examination notice is issued.
Requirements for Accelerated Examination – There must be an immediate need to obtain the trademark rights.
1) All designated goods/services must have been actually used or be in substantial preparation for use.
2) If only some goods/services have been used or are in preparation, there must be a commercial need and urgency to obtain rights for them.
Eligible Types of Trademarks – All types of trademarks (including non-traditional trademarks), except certification marks, collective marks, and collective trademarks, are eligible for accelerated examination.
Accelerated Examination Fee – In addition to the original application fee of NT$3000 per class, an additional fee of NT$6000 per class for accelerated examination is required.
Note: Once the accelerated examination fee is paid, it is non-refundable under any circumstances.
- Important points for accelerated examination application to be considered:
1) TIPO will not notify the Applicant to submit outstanding fee if the accelerated examination fee is not paid; and the trademark application will only be proceeded under the regular examination timeline.
2) The names of the designated goods/services must be clear and specific; broad terms could prevent TIPO from conducting an accelerated examination which will require correction.
3) The trademark applied for registration must be identical to the trademark actually used (no substantial identity principle would be applicable).
〈Example〉If the applied trademark is “ABC” in Roman capital letters, but the user evidence shows different fonts, different case letters (e.g. “abc”), line breaks, color differences, or combinations with other words or images, it will not be considered as the identical trademark and no accelerated examination will be accepted.
4) After applying for accelerated examination and paying the fee, TIPO will review whether the facts, reasons and evidence meet the requirements. If the requirements are not met, then TIPO will notify the Applicant to correct the issues within 10 days. In absence of corrections or the requirements are not met, the accelerated examination will not be accepted.
- Effects of Accelerated Examination:
If the facts and reasons for the accelerated examination are met and the examination fee has been paid, TIPO will issue an examination notice (approval, procedural correction, or rejection notice) within 2 months. In case of corrections, an examination decision (approval, dismissal, or rejection will be made within 15 days.
- According to current TIPO practice, the first notice for a trademark application is usually issued about 6.2 months after filing, and the examination decision is issued about 7.5 months after filing. For accelerated examination cases, if the procedures and requirements are met, an examination decision may be issued within 2 to 3 months.
- As mentioned above, besides the additional fee of NT$6000 payable per class, the trademark’s goods/services must have been fully or partially used with evidence, in order to qualify for the accelerated examination. These conditions seem strict, and it may not be easy for the Applicant to meet them.
Therefore, if the Applicant does not intend to apply for accelerated examination, he/she may alternatively use the “Fast Track” examination system to obtain a decision on the application more quickly.
Key points of the Fast Track examination system are as follows:
1) Only two-dimensional trademark applications are eligible for Fast Track examination.
2) All designated goods/services must match those listed in TIPO’s computer system.
3) A power of attorney must be submitted simultaneously with the application and cannot be supplemented later.
4) No additional fee is required for Fast Track examination applications but the regular trademark application fee.
The average examination period for a Fast Track examination application is about 4 to 5 months.
