The Taiwan Trademark Act were partly amended and published on May 24, 2023, and these amended provisions will come into effect after the Executive Yuan sets the implementation date. In line with the amended Trademark Act, the Taiwan Intellectual Property Office (TIPO) has recently proposed the Amendment drafts to the Enforcement Rules of Trademark Act and the Trademark Official Fees.
Amendment draft to the Enforcement Rules of Trademark Act
- As per the requirements of “the necessity of immediate acquisition of rights” for requesting the accelerated examination under the amended Trademark Act, the applicable circumstances include that the goods/services designated in the application for trademark registration have all been actually used or are substantially prepared for use, in which the “substantially prepared for use” means that the applicant should specifically provide evidence of the time, the marketing channels or places; or that there is a commercial necessity and urgency to use the trademark, for example, the trademark has been used by a third party without consent, or the third party requests authorization to use the trademark.
- If a trademark registration is filed in the name of an unincorporated organization or business, the applicant should attach the relevant registration document of said organization or business. For the application of trademark registration that do not have an intent to use, for example, to simply exclude others from entering the market or to impede fair competition, TIPO may notify the applicant to submit an explanation with relevant evidence.
- Since a trademark registration will be published after the application has been examined and approved, and to ease the public in identifying the right owner, the same foreign applicant should use the same Chinese translated name in the trademark application and trademark related matter. If a foreign applicant has a different Chinese translated name, TIPO will notify the foreign applicant to amend the Chinese name within a prescribed period of time, or make the amendment ex officio for the consistency of the Applicant’s Chinese name.
- If the trademark owner is a natural person, he/she may request to conceal the partial information of his/her residence in the records of TIPO’s Trademark Register (this is to balance the publicity of rights and the protection of personal privacy, and thus not applicable to a non-natural person).
- For a trademark application that has not received any official action or decision after examination, it is expressly provided that any person may submit a third-party observation against the registration of said trademark; however, if the Examiner does not notify the trademark applicant the same for submitting an opinion thereon within a time limit, then the said third-party observation shall not be used as a fact or reason to reject the trademark registration.
- For a trademark application appointing an agent, it is expressly stipulated that the registration number and ID number of said agent must be stated in the application form. The revised Trademark Act has categorized the qualifications of agents into: legal professionals, referring to law attorneys, etc.; and trademark agents, referring to those who possess professional competence handling trademark matters (passed the certification examination) and have been recorded by TIPO.
Amendment draft of Trademark Official Fees
- Adding a new fee item of NT$6000 per class for accelerated examination per TIPO’s Trademark Fee Schedule, in comply with the accelerated examination mechanism that newly stipulated in the revised Trademark Act. Kindly note the Applicant not only needs to pay the official fee for requesting an accelerated examination, it is still required to pay the regular official fee for a new application of trademark registration, depending on the number of classes and designated goods/services (basic official fee: NT$3000 per class, within 20 goods/services).
