Taiwan Trademark Act was revised and promulgated on May 24, 2023, including the introduction of an accelerated examination mechanism. The revised Trademark Act becomes effective on May 1, 2024, and the revised Enforcement Rules of the Trademark Act and the Trademark Official Fees are also implemented on the same day. Regarding the accelerated examination of trademark applications, the Taiwan Intellectual Property Office (TIPO) has specially devised the Operation procedures on requesting accelerated examination of trademark registration applications so that applicants can understand the requirements and applicable circumstances of accelerated examination.
Firstly, the accelerated trademark examination is applicable to general trademark registration applications (except for certification marks, collective marks, and collective trademarks). If the applicant needs to obtain trademark protection rights immediately, an application can be filed by stating the facts and reasons, accompanied with supporting documents (in case of foreign language, Chinese translation should be provided), and paying an official fee of NT$6,000 per class of the designated goods/services. It should be noted that a new registration application for general trademark still need to pay an official fee of NT$3,000 per class (limited to 20 items of goods/services). Secondly, the application for accelerated examination must be filed before issue of the first examination notification by TIPO after the trademark is applied for registration.
The requirements of accelerated examination are mainly determined on the use of the trademark, and the trademark used must be identical to that of the applied trademark, and it must be consistent with the name of the designated goods or services. To ease the process, TIPO has categorized the accelerated examination into the following two types. The Applicant can file a request for accelerated examination based on the suitable conditions when stating the facts and reasons and submitting the evidences.
Type 1 The trademark has actually been used in ALL goods or services, or considerable degree of preparations for use have been made. Actual use refers to the use of the trademark in Taiwan, such as using the trademark on goods or their packaging containers, or on articles related to providing services, etc. The considerable degree of preparation for use refers to the use of trademark in a manner that is close to the intended marketing of the trademark, as evidenced by submitting the samples of goods/services marked with the trademark, advertising leaflets, printed orders for promotion, advertising contracts, or business plans, etc.
Type 2 The trademark has actually been used in PART of the goods or services, or considerable degree of preparations for use have been made, and there is commercial necessity and urgency for the Applicant to assert rights. TIPO has exemplified the following situations as commercial necessity and urgency:
- A third party has used the trademark without consent, or is making substantial preparations for such use.
- A warning of infringement has been received from a third party due to the use of trademark.
- A third party requests an authorization for licensing the trademark.
- The trademark has been planned to be put on the market, and the Applicant has sales or distribution contracts with cooperative manufacturers.
- The trademark has been planned to participate in the exhibition, and the Applicant has signed contracts with exhibitors.
- Other matters that can prove commercial necessity and urgency.
If a trademark application has met the requirements for accelerated examination and filed all necessary documents, TIPO shall issue the examination result within 2 months. According to 2023 statistics by TIPO, the average time for issuing a first examination opinion and disposal for trademark applications are 6.2 months and 7.5 months, respectively. Therefore, if a trademark application has been requested for accelerated examination, the examination time will be shortened by four to five months. In Taiwan, however, trademark registration adopts a first-to-file system and does not require any use to register a trademark. Hence, when it is required that a trademark should be in use or ready to use, the conditions set for trademark applications requesting accelerated examination are stricter than those under the normal examination procedure.
