After many years of work by the governmental agencies, and with deliberations carried out by the Legislative Yuan, TAIWAN TRADEMARK LAW has undergone major overhaul. The revised TRADEMARK LAW already passed its 3rd reading at the Legislative Yuan on April 29, 2003, and the President of the Republic of China (Taiwan) also promulgated the same on May 28, 2003. However in order that relevant Trademark Rules and other internal regulations may complement with the revised law, the revised Trademark Law will only come into effect six months later, namely on November 28, 2003. As many new provisions will be introduced, the revised law is expected to bring significant changes to prevailing practices.
We hereby highlight some of the major changes:
- Substantive Examination on Renewal Application Abolished Per current practice, an application to renew a registered mark must be filed and accompanied with the user evidence dated within three years before the renewal application is made. However, when the revised law comes into effect as from November 28, 2003, the Taiwan Intellectual Property Office (TIPO) will no longer conduct substantive examination on the renewal application, namely if a renewal application fulfills the formality requirements, said application will be automatically approved.
- Three Dimensional Mark and Sound Mark Will Be Registrable As a result of the revision, any word, drawing, symbol, color, sound or three-dimensional design or combination thereof which will suffice to let the consuming public to recognize it as a mark for identifying its goods/services and to distinguish such goods/services from those of the others, such mark will be accepted for registration.
- However, if the three-dimensional shape of a mark is associated with the function of its goods or packaging, it will not be registrable.
Application Covering Multiple Classes Permitted Adhering to the principles of the Trademark Law Treaty (TLT) and the international trend, the revised law will permit a single application to cover multiple classes of goods. Also, Taiwan currently adopts the 8th Edition of the INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES. - Post-Registration Opposition System Adopted To facilitate the process of obtaining registration, the filing of opposition against a published mark during the publication period is abolished. Instead, the revised law adopts the system that when TIPO decides to accept an application for registration, the decision accepting said registration will be advertised for a three-months publication term in the Trademark Gazette inviting the public for opposition once the applicant has attended to the payment of the first installment or the total amount of the registration fee.
- Association Trademark System Repealed and Defensive Trademark Will Phase Out Upon Next Renewal Per the revised law, all registered associated trademarks shall be deemed as independent trademarks as from November 28, 2003, whereas a registered defensive trademark must be changed to an independent trademark before the expiration of its validity date.
- Payment of Trademark Registration Fee Upon receipt of Notice of Acceptance, in order the decision accepting the registered mark may soon be published, the applicant must attend to the payment of registration fee within two months. The applicant may pay the registration fees in two installments, i.e. once within two months upon receipt of the Notice of Acceptance, and the 2nd installment within three months before the third anniversary after registration, or in one payment.
- Filing of Divisional Application Against Pending or Registered Application Allowed In addition to the above revisions, according to the new law, before a definite outcome on an opposition or invalidation proceedings has been reached, a divisional application may be filed against a pending or a registered application.
- Letter of Consent Acceptable In principle, if the trademark of a junior party’s application is identical with or similar to a senior party’s prior registration or pending application, and their designated goods/services are similar to or identical with each other that as a result, the relevant consumers may be led into confusion or misconception, such a mark shall not be registrable. The local patent attorneys lobbied strongly with the governmental agencies in this regard. Finally, a new provision is added and it provides if the Junior Party is able to obtain a Letter of Consent from the senior party, the application shall be registrable, provided that the trademarks and the goods/services of the marks in question are not identical with each other.
- Dilution Concept Incorporated into The Revised Trademark Law To comply with the resolution made by WIPO and to enhance the protection of a famous trademark, dilution concept is incorporated into the revised law. A new provision will regulate that any application, which may dilute the distinctive nature or the fame of a famous trademark, such a mark shall not be registrable.
- Restricted Use of Transferred Trademark Right Following the abolishment of associated trademarks (principal mark and associated mark will become two independent marks), a new provision is added to restrict the use of such marks. In situations where two owners are using two identical trademarks in respect of similar goods/services, or two similar trademarks are used on the same or similar goods/services, and as a result the relevant consumers may be led into confusion or misconception, the new provision requires each trademark owner to add a proper remark onto their trademarked goods/services in order the public may discern their differences.
- Filing of Cancellation Trial Based on public interests, the revised law removes the restriction that only an “interested party” may file a cancellation trial. Once the revision comes into effect, any person/party may file a cancellation trial against a registered mark.
