I. The important factors for determining a well-known trademark or mark from a foreign country when alleging its trademark right in Taiwan

    On February 26, 2008, the TIPO held the workshop in Taipei on the Draft of Main Points for Determining a Well-known Trademark or Mark. We herewith abstract the main points especially for a well-known trademark or mark from a foreign country alleging its trademark right in Taiwan for your reference.

    According to the Trademark Law, Article 23.1(12), “One that is identical or similar to another person's well-known trademark or mark and hence is likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark.”

    As to the later part of the above Trademark Law “…..or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark.”, it applies to the situation that (1) two trademarks are highly similar to each other, (2) the party who would like to allege his trademark right should own a very well-known trademark or mark, and (3) their goods/services are not similar to each other.

    In practice, it happens often that a well-known trademark or mark in foreign country is hard to allege its trademark right in Taiwan when there is no sufficient evidence to prove their use of the trademark in Taiwan. Also, it is difficult to prove that the reputation established by extensive and widespread use of the trademark in foreign countries can be extended to Taiwan. However, the TIPO agrees that the factors as to whether the regions of the use of a trademark have close relationship with Taiwan, such as the economical and trading relationships, travel frequency to those countries or the similarity of cultures and languages between Taiwan and those foreign countries, for example China, Japan, Korea and the countries in Southeast Asia, etc, can be taken into account when determining a well-known trademark or mark in Taiwan. Furthermore, it should be taken into consideration as to whether products bearing the said trademark in a foreign country have been widely reported in the newspapers and/or magazines circulated in Taiwan or have been frequently discussed in Chinese websites.

    By providing the evidence as mentioned above, the well-known trademarks or marks from foreign countries could have better chances to allege their trademark rights in Taiwan, even though there is no sufficient evidence about the actual use of the marks in Taiwan.

Ⅱ. The general periods of handling the Trademark matters in the TIPO (published in May, 2007)

    ★The procedures of supplementing documents, amendments, responses or filing requests of time extension are not calculated in the above periods.

I. Status of Patent Attorney Act

    Announced by the TIPO on January 11, 2008, the Patent Attorney Act was effective as of the even date. The 1st Patent Attorney Eligibility Examination will be held in August 2008. According to the Article 4 of the Patent Attorney Act, “….. A non-citizen may take the Patent Attorney Eligibility Examination in accordance with the laws of the Republic of China; a non-citizen who successfully passes the Patent Attorney Eligibility Examination and obtains a Patent Attorney License in accordance with this Act may practice as a patent attorney.”

    As stated in the “Regulations for the Senior Professional and Technical Examination for Patent Attorneys”, Article 10, the subjects to be tested in this Examination are:

The Patent Act;

The Administrative Procedure Act and Administrative Enforcement Act;

Standards for Patent Review and Patent Applications and Practice;

Calculus, General Physics and General Chemistry;

Professional English or Professional Japanese (to be chosen at the discretion of the candidate);

One of: Engineering Dynamics, Biotechnology, Electronics, Physical Chemistry, Basic Design or Computer Architecture (to be chosen at the discretion of the candidate).

    With the exception of Professional English and Professional Japanese, which are tested in a combined written-response and multiple-choice format, all other subjects are tested in open-ended written format.

    For more information about “Regulations for the Senior Professional and Technical Examination for Patent Attorneys”, please refer to the website of Ministry of Examination in Taiwan: http://wwwc.moex.gov.tw/ct.asp?xItem=13692&ctNode=2136.

Ⅱ. I.The general periods of for handling the Patent matters in the TIPO (published in December, 2007)

    ★The procedures of supplementing documents, amendments, responses or filing requests of time extension are not calculated in the above periods.