Accelerated examination for trademark applications effective as of May 1, 2024

　TIPO has officially launched the program for accelerated examination for trademark registration applications as of May 1, 2024, benefiting the applicants in need of immediate trademark right acquisition.  There are two requirements for requesting expedited examination, which are (1) the “urgency” and “necessity” for acquiring trademark rights timely and (2) the payment of “additional official fees” for accelerated examination (the user-pays principle).  Generally, the first examination notice will be issued within two months after filing.  However, on a case-by-case basis, the efficiency of the expedited examination might be diminished and the issuance of examination result might be delayed if notifications for amendments or suspensions are issued during the examination process.

　The requirements and process for requesting for accelerated examination are straightforward.  Applicants may request expedited trademark examination during the period between filing the trademark registration application and receiving TIPO’s first examination notice if there is an urgent need for them to secure trademark rights.  Generally, the following two types of trademark applications are eligible for the accelerated examination program:  (a) All the goods/services designated in a trademark registration application have been actually used or substantial preparations have been made for such use, and (b) part of the goods/services designated in the trademark registration application have been actually used, provided that the evidence demonstrating the urgency and necessity to acquire rights in commerce in the following situations should be produced.  For example, (a) the applied-for trademark is being used by a third party without authorization or consent; (b) a third party requests for licensing for the applied-for trademark, or (c) there has been a plan to release the applied-for trademark on market or for exhibition.  

　Among the current pending cases filed for expedited examination, the first application that has fully satisfied the expedited examination criteria has been approved.  Taking this case as an example, this registration application was initially filed on March 1, 2024, and the applicant requested for accelerated examination on June 4, 2024 on the ground that a third party requested for trademark licensing, which constitutes the requirement of necessity of immediate trademark right acquisition.  For the purpose of expedited examination, the applicant paid an official fee of TWD6,000 per class of registration and produced the trademark licensing agreement as supporting documentary evidence.  TIPO examined the application and found no grounds of refusal under the Trademark Act, and thus issued the disposition of acceptance on June 13, 2024.  Compared to the current average first office action pendency of around 6.2 months and the average disposal pendency of 7.5 months, the accelerated examination process is significantly shortened, which ultimately facilitate applicants’ commercial planning and rights protection.   
   
　The TIPO also reminds applicants that the examination process may not be shortened in some specific circumstances where the applied-for trademark is non-traditional, involved in a dispute, or the names of its designated goods or services are too broad or not specific.  These circumstances usually require amendments or temporary suspension during the examination process, thus potentially affecting the efficiency of accelerated examination intended.  Applicants are advised to carefully evaluate their circumstances.  Besides, the applied-for trademark must be identical to that actually being used to qualify for accelerated examination.  Therefore, applicants are advised to conduct preliminary review before filing so as to minimize the possible conflict with prior applications or registered trademarks.  In addition, it should also be noted that the official fees paid for accelerated examination are not refundable if the application is found not in compliance with the expedited examination criteria.

　Subject to the first-to-file principle adopted by Taiwan’s Trademark Act, trademark registration applications should be examined in order of filing.  However, the increasing number of trademark applications and the limited examiners make the intended examination time shortening quite challenging.  In response to the industrial development and the demand for right protection, the amended Trademark Act introduces the expedited mechanism for trademark applications, which allows applicants with urgent needs to acquire trademark rights rapidly while balancing the standard application examination time and following the user-pay principle.  The new mechanism will significant enhance the effectiveness of trademark registration.  The TIPO encourages applicants to make use of the new mechanism.  (Released 2024.06.13)
/CCS