As previously reported in our Newsletters dated May 30, 2003 and November 3, 2003, our new Trademark Act will become effective on November 28, 2003. In addition to changing the trademark practices in Taiwan, such as abolition of substantive examination on renewal applications; allowance of three-dimensional mark and sound mark; adoption of post-registration opposition system; abolition of association trademark system; acceptance of letter-of-consent system and additional payment of registration fee system, the following points are also noteworthy:
- A registered trademark will become invulnerable by invalidation after five years from the publication date of registration Per the current Trademark Act, an invalidation trial to invalidate a registered trademark as null and void could be filed at any time. However, per the new Trademark Act to come into effect on November 28, 2003, a registered trademark will become invulnerable as no application or request for an invalidation shall be allowed after a lapse of five (5) years from the date of publication of the registration. Therefore, if you or your Client has a mark which is in conflict with a prior registered mark in Taiwan and filing of an invalidation is necessary, then please note such an invalidation proceeding must be done by November 27, 2003, should said prior registration become five years old by then.
- An associated mark will be invulnerable by non-use cancellation in the next three years till November 27, 2006 Per the current Trademark Act, a registered trademark may be liable to non-use cancellation proceeding if the registered owner has stopped the use of said mark for more than three years. Further, the existing law permits in the case of a registered associated mark, if one of its principal and/or associated mark was used in the last three years, such use thereof could be inured as the use of the principal and/or associated mark.
Since the new Trademark Act will abolish the associated mark system, the period to calculate the three-year non-use for an associated mark will start from the date of November 28, 2003, thus, an associated mark will become vulnerable on non-use cancellation only after November 28, 2006. It is therefore recommended that if you or your client who would like to file a cancellation trial against an associated mark on the ground of non-use for more than three years, preferably, a cancellation trial should be filed by November 27, 2003. - Pros and cons for filing multiple-class and single-class trademark application Starting November 28, 2003, if an applicant intends to file a trademark application covering several classes in Taiwan, it may have the option to choose in filing a multiple-class application or several single-class applications. According to the official fee schedule promulgated by Taiwan Intellectual Property Office (TIPO), the fees for filing new multiple-class application are based on the number of classes involved; or in other words, TIPO does not offer reduction in the official fee when filing multiple-class application. For your reference, we herewith list the pros and cons in filing multiple-class application or several single class applications:
MULTIPLE-CLASS APPLICATION PROS - If it is difficult to properly classify the designated goods, with multiple-class application, it has the advantage to easily move the goods from one class to another class during the prosecution process. Whereas in situation of filing several single-class applications, if the designated goods in one class was found to be improperly classified, it may not be possible to move the goods to another application if the other application has already been accepted for publication, albeit when two applications were filed simultaneously.
- For the second application filed, agent’s fee will be slightly reduced.
- When the multiple-class trademark application is accepted for registration, only one registration certificate will be issued, meaning it may be easy to maintain and control the trademark porfolio. CONS
- For filing multiple-class applications, the payable official fees are based on the number of classes filed, and TIPO does not offer any reduction.
- During the prosecution of the multiple-class application, if the designated goods in one class encounter objection or rejection while the other application(s) is approved for registration, the entire application in question will be delayed for acceptance, and the registration certificate will not be issued until all the classes in the same application have been accepted.
- If in the future, during the prosecution of the multiple-class application or after the issuance of registration certificate, should any disputes arise that divisional application has to be filed, then the total cost may become more expensive. SINGLE-CLASS APPLICATION PROS 1. Each application is independent of the other applications filed; accordingly, if the designated goods in one application are objected/rejected, such will not delay the procuration of registration certificate of another application. 2. Should any disputes arise in the future, there is no need to file divisional application and thus additional expenses may be avoided. CONS
- When two or more separate applications are filed at the same time, should one application needs to move its designated goods to the other application due to incorrect classification, it may be possible that other application having undergone smooth examination, be accepted already, thus new application must be filed to cover the incorrectly classified goods.
- When several single-class applications are filed, TIPO will allocate separate application number for each application, and finally assign each application a separate registration number upon its registration. As a result, this may cause one trademark which was registered in several classes, having many different registration numbers to cover its registration in each class; in turn, it may be difficult and expensive to maintain the trademark portfolio.
- When two or more single-class applications are filed simultaneously, the agent’s fee will not be reduced.
