The Examination Standards for Well-known Trademark Protection of Article 23 I (2) of the Trademark Act was announced and effective on November 9 and the Main Points for Determining a Well-known Trademark or Mark was abolished on the same day.

    After two public hearings on September 4 and September 12, 2007 to collect all opinions from the attendees (including representatives from the Japan Interchange Association-Taipei Office, Petitions and Appeals Committee of MOEA, Committee of Laws and Regulations of the Executive Yuan, as well as scholars, professionals, and trademark attorneys and agents, this standard was finalized and announced on November 09, 2007.

    Most content of the “Examination Standards for Well-known Trademark Protection of Article 23 I (2) of the Trademark Act” is adopted from the “Main Points for Determining a Well-known Trademark or Mark with some wording amendments to involve issues on well-known trademark protection.

TIPO has published the “Trademark Act Draft Amendment” on TIPO's official website for reference on November 30, 2007.

    In order to harmonize with the international community and to be in compliance with international trademark law conventions, TIPO has published the “Trademark Act Draft Amendment” online for reference on November 30, 2007, and welcome any suggestions on the revisions.

    In addition, TIPO offered three proposals to stipulate for the qualifications and management to the Trademark Attorneys in Article 8 of the Amendment：(1) To follow the precedent of the Patent Attorney Act, establishing separate law to stipulate trademark attorneys as well. In this JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES P. 2 regard, trademark attorneys will be qualified for practice only when they pass the national examination; (2) The TIPO will set up norms to provide for the qualifications, rule of conduct, and training, etc. and will hold the Qualification Examination by themselves or by an origination authorized; or (3) The trademark attorneys will be qualified for practice by completing a pre-employment training held by the TIPO or an organization authorized instead of passing the national examination.

    However, the following articles will remain unchanged at this stage and be amended after the establishment of an appeal organization is set: Articles 6, 7, 15, 16, 21, 24, 31, Chapter V (Opposition) and Chapter VI (Invalidation and Revocation) of the current Trademark Act.

    After collecting the precious suggestions from the public, and determining whether to further revise the Trademark Act, TIPO will hold a public hearing in due course.

TIPO’s explication for the trademark registration of “Confucius in Chinese”, name of a famous historical character in education field, on November 15, 2007

    Actually, the stipulations as to whether name of a historical character can be registered as a trademark are quite different from country to country.

    Generally, it is possible to register a name as a trademark because a name may be distinctive enough to be recognized by relevant consumers and differentiate goods or services from those offered by others due to the trademark regulations and practices in Taiwan. Therefore, the name of a historical character can be acceptable to register as a trademark, such as “Lincoln” for cars and “MOZART”for chocolate.

    However, a third party can still use the name of a historical character, which has been registered as a trademark by a person, only if his use is through means of bona fide and fair use, conforming to Article 30 I (1) of the Trademark Act.

    As to the registration of “Confucius in Chinese” filed by DEVELOPMENT CENTER FOR TEACHING CHINESE AS A FOREIGN LANGUAGE OF THE MINISTRY OF EDUCATION P.R.C., since the Trademark Division in TIPO, after self-criticism and internal review, presumes that the mark “Confucius in Chinese” is not distinctive enough to be recognized by relevant consumers and differentiate goods or services from those offered by others when designating on goods and services about education, they have inquired to invalidate the said registration ex officio. The registrant is going to have a chance to respond to the invalidation application.

TIPO offered, on November 22, 2007, the “Requirements for preparing the specification and drawings of a design application” on TIPO’s official website for reference by any one who would like to file a design application.

TIPO announced on November 09, 2007 that the search reports and the examination decisions of the corresponding applications in foreign countries will be taken into account during the examination.

    In order to expedite the examination and enable the applicant to obtain the patent right earlier, the Examiner will take the search reports and the examination decisions of the corresponding applications in foreign countries into account when examining a patent application filed by a foreign company/individual or by a local company/individual, who also filed the same application in foreign countries. Such practice has been effective as from October 2007.

    Basically, the Examiner will search prior arts filed in Taiwan first when examining a patent application. However, if a search report has been issued to the corresponding application by the Patent Office in a foreign country, or the corresponding application in a foreign country has been allowed to register, the search for the prior arts filed in foreign countries will be left out.

TIPO prolonged the period for responding to an Official Action against a patent or design application filed by a foreign company/individual from 60 days to 90 days. Such regulation has been announced on December 26, 2007 and effective on January 01, 2008.

    Since January 01, 2008, TIPO prolonged the period for responding to an Official Action against a patent or design application filed by a foreign company/individual from 60 days to 90 days.

    During the transition stage, if patent or design applications received the Official Action before December 31, 2007, and the deadline set for responding to the same is due after January 01, 2008, the period will be automatically prolonged from 60 days to 90 days.

    If a notice for accepting time extension has been issued before December 31, 2007, and the updated deadline is due after January 01, 2008, the period will be automatically prolonged from 60 days to 90 days. However, the total period, including the following time extension, for responding the Official Action should not exceed 180 days.

    For those which do not respond to the Official Action by the official deadline due before December 31, 2007, but there is not enough time for the TIPO to issue the Refusal Decision, the period will be automatically prolonged from 60 days to 90 days. However, the total period, including the following time extension, for responding the Official Action should not exceed 180 days.