The Legislative Yuan passed the third reading on May 9, 2023 for amendments of several provisions of the Trademark Act in Taiwan. The partial amendments of this Act were promulgated by the Presidential Order on May 24, 2023, and the implementation date will be determined by the Executive Yuan. These amendments have the following five main points:
Accelerated examination for trademark registration application
If there is an imminent need to obtain the right of a trademark registration, such as when an infringement and litigation has occurred, or the product is exhibiting, or the product is ready to go on the market, the applicant can file a request for accelerated examination by stating the facts/reasons and paying an official fee. The examination period will be shortened from the normal six or seven months to about two months. Such accelerated examination is applicable to trademark applications (excluding certification marks, group marks or group marks) that have not been received an official action or decision.
Eligible entity of trademark applicant
Per the prevailing Trademark Act, it has expressly stipulated the eligibilities of applicants who file collective marks and collective trademarks, but not the eligible entities of applicants for general trademark applications. In practice, if the applicant is an unincorporated body, the name of the unincorporated body plus the name of the person in charge can be used as the applicant to file a trademark registration, but disputes over the ownership of rights may arise for some cases. In order to meet the actual needs of commercial entities operating in the market, the revised Act has stipulated an eligible trademark applicant to be a natural person, legal person, partnership organization (such as a law firm), administrative agency, and registered unincorporated body (such as a temple or association), or a business entity registered under the Business Registration Act, who intends to engage in the business of designated goods or services.
Nominative fair use of a trademark under specific circumstances
The amendment expressly stipulates that the applicable circumstances of indicative fair use must conform to the honest practice of commercial transactions, and must not cause the likelihood of consumers’ confusion. In this regard, TIPO exemplifies the advertising signboard by shops that provide the repair services of mobile phone and communication to indicate the various registered trademarks of mobile phones, which shall belong to the scope of fair use and not to constitute the doubts of infringement.
Simplified custom notification procedure for determining the infringement
The Trademark Act stipulates that the customs must notify a trademark right owner for the import and export articles that may constitute infringement of the trademark. Before the amendment, the right owner must go to the customs on site for determining the alleged articles. However, since the customs have simplified the border protection measures, a trademark right owner can now judge whether there may be an infringement through the photo files provided by the electronic customs platform.
Management of qualified trademark agents
For an agent handling trademark registration applications and other procedural matters, it is expressly stipulated that the trademark agent must be a professional person (such as a lawyer) who can perform trademark matters according to the law or has trademark professional ability and been registered at TIPO.
