In Taiwan, a third party can file an observation against a pending trademark application. In order to provide such observation system, Taiwan Intellectual Property Office (TIPO), by referring to Article 36 of Administrative Procedure Act which stipulates that the administrative agency shall ex-officio examine the available exhibits, recently promulgated “Guidelines for Third Party Observation of Trademark Application” to take effect from June 20, 2019. The main contents of said Guidelines for filing a third party observation are as follows:
- The observation can be submitted by any person other than the applicant who filed the trademark application; and if necessary, said submission can be made anonymously.
- The filing of observation, along with any supplement of observations and exhibits, is applicable only to a pending trademark application (regular trademark, collective trademark, collective mark, certification mark) before a decision has been made.
- The observation against the registration of a trademark shall be made on the basis of one or more causes including 1) non-distinctiveness, 2) prior use by another party, 3) intention of plagiarism and imitation, 4) existence of another party’s well known trademark or mark, 5) infringement of another person’s copyright, patent right or other right, and 6) other refusal or cause for non-registration
- The observation shall be filed by a written request with exhibits, and no official fees are required.
- If TIPO decides exhibits from the observation submitted by a third party may serve as the rejection grounds against registration of a trademark, TIPO will notify the trademark applicant to make a response first, otherwise a rejection decision cannot be made based on said exhibits submitted by the third party observation.
- TIPO will neither make any reply to the third party who filed the observation, nor notify whether the observation is adopted or the result of examination after said observation was filed.
- If a decision of allowance for registration is rendered on a trademark application after a third party observation was filed, the third party may still lodge an opposition or invalidation to revoke the trademark registration after the said trademark application has been registered.
The observation submitted by a third party could serve as a reference for examination. The examiner may make use of such information provided by a third party, so to strengthen the legality of trademark registration in Taiwan, especially to avoid a trademark filed in bad faith. Filing observation against a trademark application may save more time and cost, as compared with filing opposition or invalidation in order to revoke a trademark registration after it was registered.
