The Executive Yuan (the Cabinet) of Taiwan has announced that the revised Trademark Act (promulgated on May 24, 2023) becomes effective on May 1, 2024. To comply with the revised Trademark Act, the Enforcement Rules of Trademark Act and the Trademark Official Fee Schedule have also been amended and take effective from the same day. According to the new fee schedule published by the Taiwan Intellectual Property Office (TIPO), it mainly includes a new official fee for the request of accelerated examination, and there is no other change for trademark fees including the filing fee for trademark registration or the renewal fee for registered trademark. Namely, the official fee for a regular trademark registration remains unchanged at NT$3,000 per class (within 20 items of goods/services), but if a request for accelerated examination is filed, it will incur an additional fee of NT$6,000 per class.
| Key points of amendments | Description | |
|---|---|---|
| 1 | Qualification and management of trademark agent | A trademark agent must be a professional who can prosecute trademark matters according to the law or possesses with trademark professional ability and has been registered at TIPO. |
| 2 | Accelerated trademark examination mechanism (not applicable to certification marks, collective marks, or collective trademarks) | A request for accelerated examination can be filed if the applicant has an immediate need to obtain trademark rights (due to infringement, exhibition or marketing of goods, etc.) under either of the circumstances: 1) all the goods or services have been actually in use or are ready to be used; and 2) some goods or services have been in use or are ready to be used, and there is a commercial necessity and urgency. |
| 3 | Eligibility of trademark applicant | It is expressly stipulated that the applicant shall be a natural person, a legal person, a partnership, an administrative agency, an unincorporated body or a business registered under the law, who intends to engage in the business of the designated goods/services. |
| 4 | Functional portion in the representation of a trademark | It shall be presented in dotted lines or disclaimer made not be a part of the trademark. |
| 5 | Indicative fair use of trademark | Where the use of trademark conforms to the honest practice of commercial transactions, without causing the likelihood of confusion by consumers, it may be deemed indicative fair use. |
| 6 | Limitation on the scope of bona fide prior use of trademark | A registered trademark shall not prohibit a third party from bona fide prior use, provided that the use is only to the original extent. |
| 7 | Exception to the trademark exhaustion principle | Broaden the scope of protection of trademark right stipulating that the exhaustion of trademark rights shall not be applicable to unauthorized processing or alteration of goods after they have been put on the market. |
| 8 | Simplified custom verification procedures for determining the trademark infringement | Trademark right holders can determine whether there is any infringement of goods through the photo files provided by the electronic customs platform. |
| 9 | Strengthening protection on the famous names of judicial persons, trade names or collective names | If a trademark is being identical with or similar to those famous or well-known names, which may cause confusion among the public, it shall not be registered. |
