Taiwan IPO announces draft amendments to Trademark Act

　Taiwan IPO issued a press release on November 26, 2019.  According to the press release, Taiwan IPO has been drafting amendments to the Trademark Act since 2018, for which Taiwan IPO has held consultation meetings attended by experts and scholars and the meetings on trademark examination quality and also public hearings to seek and gather opinions.  After formulating and integrating comments and suggestions from all sectors on the public hearing held on October 15, 2019, Taiwan IPO proposed and draft amendments to the Trademark Act with a view to ensuring that Taiwan’s legal trademark framework fits in with trademark examination requirements in practice.  

The draft amendments have been proposed with a total of 14 articles amended and 2 new articles added.  The main points of the amendments are summarized as follows.  

1.  Paragraph 2 of Article 6 of the draft amendments specifies the qualifications of trademark attorneys other than attorneys or agents who may practice trademark-related matters.  Paragraph 3 of the same Article further provides the legal basis and sets forth relevant rules for the competent authorities to administer trademark agents’ registration, etc.  

2.  The scope of accelerated examination mechanism for trademark applications will be narrowed down to “registration applications” only.  The amended provision in paragraph 2 of Article 14 of General Provisions in Chapter I will be moved to paragraph 8 of Article 19 of Section I, “Application for Registration” in Chapter II to serve as the fee-charging standard for accelerated examination so as to correspond to the amended Article 104.  Specific guidelines for accelerated examination will be established in line with the accelerated examination program of patent application.  

3.  The ground for disapproval of registration, “where a final judgment of the court has been rendered” listed in subparagraph 15, paragraph 1 of Article 30 was to be removed from the Act, but most attendants of the public hearing disagreed to the contemplated removal of the ground in view of the possible disputes to arise with such removal in practice.  In consideration of the actual difficulties in assessing and verifying the ground in the process of examining trademark registration applications, reference from paragraph 2 of Article 60 of the EU Trade Mark Regulation is drawn to move the ground as listed in subparagraph 15, paragraph 1 of Article 30 of the current Trademark Act (grounds for disapproval of registration) to paragraph 2 of Article 57 in the amendments as the ground for invalidation filed by an interested party.  Also, Taiwan IPO will decide on invalidation requested after the parties have provided their evidence and defense, and the ground is not subject to the five-year peremption period.  

4.  The provisions governing “opposition” stipulated in Section IV of Chapter II of the Act was about to removed and the contemplated removal was supported in the public hearing.  To prioritize legal stability, now the Taiwan IPO drops the contemplated removal of this section and keeps it unchanged in the Trademark Act.  This is because Taiwan IPO is planning to amend the adversary system for trademark disputes and it is better and more appropriate to first formulate an integral and comprehensive structure for trademark challenges.  (November 2019) 

/CCS