Legislature of Taiwan approved amendment to Trademark Act to introduce accelerated examination for trademark applications

　The draft amendment to the Trademark Act cleared the legislative floor in the Legislative Yuan session on May 9, 2023.  The highly-concerned amendment focuses on the introduction of accelerated examination mechanism, the establishment of trademark agent management system, specification of the scope of nominative fair use, etc..  With the enforcement of the amended Trademark Act, the examination of trademark applications will be more flexible and expedited, and trademark applicants and proprietors may engage professional trademark agents, which will avail corporate trademark application strategies and enhance overall administrative efficiency.   

Key points of the amendment are summarized as follows.  

1.  Introduction of accelerated examination mechanism of trademark applications 

The amendment incorporates provisions to specify the basis and the eligibility for accelerated examination, so as to answer to the applicants’ need to timely obtain registrations of their trademarks and to keep in tandem with the international practices.  (Article 19, Article 94, and Article 104) 

2.  Establishment of trademark agent management and protection over current trademark practitioners’ rights 

(1)  The amendment requires that only those individuals who possess specific qualifications and trademark-related competence and have completed relevant registration may act as trademark agents to engage in trademark agency service.  In addition, the competent authority is authorized to formulate regulations governing the management of qualified trademark agents and to maintain a list of registered trademark agents for public inquiry.  (Article 6 and Article 12) 

(2)  New provisions are incorporated for the transition for trademark agent registration and to designate the time limit for completing such registration, so as to ensure the rights of the trademark practitioners who had been engaged in trademark agency services before the enforcement of the amendment.  (Article 109-1)  

3.  Simplification of procedure of authentication conducted by trademark proprietors upon the customs notice

For keeping in line with the simplified border control measures implemented by the Customs Administration of the Ministry of Finance, trademark proprietors may conduct authentication on suspected goods or articles detained by the customs through an online platform by accessing to the digital photos of these suspected goods or articles and may conduct on-site authentication when necessary.  (Article 75)  

4.  Expanded scope of eligible trademark applicants 

For answering to business entities’ practical needs for operation on market, the amendment provides that partnership organizations (such as, law firms and architectural firms), non-corporate groups (such as, temples, associations, and production and marketing groups), and duly-registered sole proprietorships or partnerships are now included as eligible applicants for trademark registration and to act as a party in litigation.  (3^rd paragraph of Article 19 and Article 99)  

5.  Specification of fair use 

The amendment incorporates and defines “nominative fair use” that is not subject to the effect of another person’s trademark rights and does not constitute trademark infringement.  For example, mobile phone repairing service providers may use the trademarks of various branded mobile phones in their advertisements to indicate the specific branded mobile phones for which they provide repairing services. (Article 36) 

　The number of trademark applications has been going up in recent years with the categories of registrations exceeding more than 100,000 for six consecutive years.  As opposed to the rising demand for registration, the current examination capacity may prolong the time for enterprises to obtain their trademark rights and thus affect their trademark registration strategy.  In view of the foregoing, the amendment, by reference of international legislative precedents, introduces the accelerated examination mechanism, under which trademark applicants may request for expedited examination of trademark applications after stating the facts and reasons of their requests and paying the fee required for expedited examination.  

　Under the current Trademark Act, individuals may engage in trademark agency services as long as they have residence in Taiwan, which gradually gives rise to an unregulated and lax situation that even those without trademark-related competence may solicit clients at lower prices or provide agency services indiscriminately.  In order to eradicate the aforesaid situation and to keep in line with the international practices, the amendment introduces several new measures to protect trademark proprietors’ rights by laying down the provisions that trademark agents must possess certain professional expertise and competence to examine evidence and apply law provisions for their clients.  Moreover, with a trademark agent management system duly established, information transparency is ensured to make the public’s inquiry easier.  The foregoing new measures will ultimately safeguard trademark applicants’ rights on a more comprehensive extent.  

　Furthermore, as the current provisions do not specify fair use and would cause ambiguity in interpretation, the amendment therefore clearly sets forth the circumstances and requirements for asserting “fair use”, which is to prevent trademark users from being involved as a party to litigation.  (Released 2023.05.09)  
/CCS