Principles to deal with the trademark matters during the transition stage from the current Trademark Act to the amended One
[ February 2012 ] >Back| No. | Items | Time of filing / examination | Act to be applied | Explanation | |
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Amended
Act
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Current |
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| 1 |
Amended Act §18
Motion or hologram trademarks
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Applications are filed before the amended Act comes into force. | ● |
The filing date of motion or hologram trademarks will be the date when the amended Act comes into force. For the application with priority claim, its priority date will be the date when the amended Act comes into force (amended Act §108、§109 I).
If there are two or more applications filed on the same day, a compromise shall be reached between the applicants or lots shall be drawn where a compromise has failed to be reached according to the amended Act §22.
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| Applications are filed after the amended Act comes into force. | ● |
The applicant shall use the non-traditional application form due to the nature of the trademark, containing the information of the applicant, a representation of the trademark, and the designated goods or services.
The filing date is the date on which an application referred to in the preceding paragraph is furnished to the TIPO according to the amended Act §19 II.
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| 2 |
Amended Act §18
Scent, taste or touch trademarks
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Applications are filed before the amended Act comes into force. | ● | The applications shall not be accepted because the amended Act §108 and §109 I are not applied. | |
| Applications are filed after the amended Act comes into force. | ● |
The applicant shall use the non-traditional application form due to the nature of the trademark, containing the information of the applicant, a representation of the trademark, and the designated goods or services.
The filing date is the date on which an application referred to in the preceding paragraph is furnished to the Registrar Office according to the amended Act §19 II.
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| 3 |
Amended Act §21
Claims of rights of exhibition priority
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Applications are filed before the amended Act comes into force. | ● | The application shall not be accepted because claims of rights of exhibition priority -do not exist in current Trademark Act. | |
| Applications are filed after the amended Act comes into force. | ● |
(1)
If the date of the first exhibition is within a period of six months prior to the date when the amended Act comes into enforce, the date of the enforcement of the amended Act shall be deemed to be the priority date thereof. (the amended Act §109Ⅱ)
(2)
If the date of the first exhibition is later than the date when the amended Act comes into enforce, the date of the first exhibition shall be deemed to be the filing date thereof. (the amended Act §21)
(3)
If the application is filed earlier than a period of six months prior to the date when the amended Act comes into enforce, the application will not be accepted because the six-month period for claiming rights of exhibition priority has expired. (the amended Act §21)
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| 4 |
Amended Act §31 Ⅱ Time limits set for responding to a written notice with reasons of rejection |
The written notice is served before the amended Act comes into force. | ● |
(1)
According to §24 II of the current Act, the applicants shall state their comments within thirty (30) days counting from the next day of receiving the written notices. The thirty-day period is the time limits specified in the notice. The applicants may make a request with reasons to the TIPO for an extension of one month. For those who have no domicile or business office within territory of the Republic of China, a request of two months will be accepted.
(2)
When the 2nd request of time extension is filed, the TIPO will judge whether it is necessary based on the nature of the written notice so as to decide to accept it or not. |
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| The written notice is served after the amended Act comes into force. | ● |
(1)
For the applicants who have domiciles or business offices within territory of the Republic of China, time limits set for them to respond to the written notices will be one month. For those who have no domicile or business office within territory of the Republic of China, time limits set for them to respond to the written notices will be two months.
(2)
The applicants may make a request with reasons to the TIPO for an extension of one month. For those who have no domicile or business office within territory of the Republic of China, a request of two months will be accepted.
(3)
When the 2nd request of time extension is filed, the TIPO will judge whether it is necessary based on the nature of the written notice so as to decide to accept it or not. |
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| 5 |
Current Act §26/Amended Act §32Ⅱ
The time and the way for the payment of registration fee
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The notice of approval and payment of the registration fee is served due to the current Act, but the official due date for the payment of the said fee expires after the amended Act comes into force. | ● |
(1)
According to the current Act, the applicants may pay the registration fee in two installments.
(2)
For those who chose to pay registration fees by two installments before the enforcement of the amended Act, the payment for the second installment shall be made within the last three months before the end of the third year counting from the publication date of the trademark registration. Those who fail to pay the second installment on registration fee within the time period stipulated in the preceding paragraph are provided with an extra period of six months after the end of the third year in which the said installment shall be made in double (the amended Act §105)
(3)
Trademark rights of those who fail to pay the second installment on registration fee pursuing to provisions of the preceding paragraph shall be extinguished on the day following the last day of the extra period for paying in double. (the current Act §26Ⅲ) |
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| The notice of approval and payment of the registration fee is served after the amended Act comes into force. | ● | The two-installment payment option for registration fee is abolished in the amended Act. The registration fee shall be conducted in a lump-sum payment. | |||
| 6 |
Amended Act §32Ⅲ
Applying for reinstatement of rights for registration fees because of delaying the payment of registration fee
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A request of reinstatement of rights for registration fees is filed before the amended Act comes into force. | ● |
(1)
The application shall not be accepted because the current Act doesn’t provide the provision of reinstatement of rights for registration fees because of delaying the payment of registration fee.
(2)
Where the registration fee remains unpaid by the end of the stipulated period, the trademark shall not be registered and published, and the original approval shall become invalid. (later part of the current Act §25Ⅱ)
Exceptionally, an applicant may, in the case where the statutory period has been delayed from natural disasters or causes not attributable to the applicant, submit a written statement clarifying all reasons within thirty (30) days from extinction of such cause to the TIPO for restoration to the status quo ante. (the current Act §9Ⅱ)
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| A request of reinstatement of rights for registration fees is filed after the amended Act comes into force. | ● |
(1)
Where an applicant has unintentionally failed to pay the registration fee within time limits, the applicant may pay the registration fee in double within six months after the stipulated time limits expires, in which case the TIPO will publish the registration. However, this may not be applied if it would affect trademark applications for registration filed by a third party during such period or trademark rights obtained by a third party during such period.
(2)
Where an applicant fails to pay the registration fee by the end of the stipulated period under current Act but the six-month grace period hasn’t expired when the amended Act comes into force, the applicant may still apply for reinstatement of rights for registration fees due to the amended Act. |
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| 7 |
Amended Act §31Ⅲ、38Ⅲ
Time for restriction of the designated goods or services,or division of an application for registration
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An application is formally rejected or a decision of a contentious case is delivered before the amended Act comes into force, and it is under the relief procedures when the amended Act comes into force. | ● | It is available to apply for division or restriction of the designated goods or services of an application or a contentious case according to the current Act. | |
| The rejection of an application or the decision of a contentious case hasn’t been made when the amended Act comes into force. | ● | The application for division or restriction of the designated goods or services of an application or a contentious case shall be filed before the rejection of an application or the decision of a contentious case is made. | |||
| An application or a contentious case is filed after the amended Act comes into force. | ● | The application for division or restriction of the designated goods or services of an application or a contentious case shall be filed before the rejection of an application or the decision of a contentious case is made. | |||
| 8 |
Amended Act §57Ⅱ、§67Ⅱ
Submission of evidence that the trademark relied upon was in use on the goods or services relied upon in three years before an invalidation or a revocation application is filed
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Invalidation or revocation cases are filed and received before the amended Act comes into force but the dispositions thereof have not been rendered when the amended Act comes into force. | ● | According to the amended Act §106 II and §107 II, it is not necessary to supplement the evidence of use of the trademark relied upon to bring the invalidation or revocation action under this situation. | |
| An invalidation or revocation application is filed after the amended Act comes into force. | ● | According to the amended Act §57 II and §67 II, if the trademark relied upon to bring the invalidation or revocation action has been registered for three years or more, the invalidation or revocation application shall be accompanied with evidence that the trademark relied upon was in use on the goods or services relied upon in three years before the filing thereof, or by any facts or evidence of proper reasons for non-use. Failing to submit the required evidence within the stipulated period, the invalidation or revocation application shall be dismissed. | |||
| 9 | Disclaimer | Applications have been approved to registration before the amended Act comes into force. | ● | Even if the non-distinctive part which has been disclaimed would not give rise to doubts to the scope of protection of the trademark, it is not necessary to make the correction after the amended Act comes into force. | |
| Applications are filed before the amended Act comes into force but haven’t been approved to registration when the amended Act comes into force. | ● | In the amended Act, only when the non-distinctive element in a trademark could give rise to doubts to the scope of protection of the trademark, it is necessary to disclaim the exclusive right to such element. | |||
| Applications are filed after the amended Act comes into force. | ● | Where the representation of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of protection of the trademark, the applicant shall state that he/she disclaims any exclusive right to such element. If there is no disclaimer, the trademark may not be registered. (the amended Act §29Ⅲ) | |||
| 10 |
Amended Act §30Ⅰ(10)
Agreement of coexistence signed by the proprietor of an earlier registered trademark or the applicant of an earlier filed trademark
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Applications are filed before the amended Act comes into force but haven’t been approved to registration when the amended Act comes into force. | ● | If the situation is obviously improper, the trademark application shall be rejected even though the applicant has submitted an agreement of coexistence signed by the proprietor of an earlier registered trademark or the applicant of an earlier filed trademark. | |
| Applications are filed after the amended Act comes into force. | ● | Even if an application is filed with consent from the proprietor of the earlier registered trademark or the applicant of the earlier filed trademark, the application shall not be approved when the situation is obviously improper. For example, both trademarks and designated goods or services are identical, or the proprietors of trademarks continue to provide consent to registered trademarks even after their trademarks have been restricted for disposition by court ruling. | |||
| 11 |
Amended Act §30Ⅰ(12)
Examination of “with the intent to imitate a trademark”
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Applications are filed before the amended Act comes into force but haven’t been approved to registration when the amended Act comes into force. | ● | The amended Act provides the provision related to when a trademark is filed for registration with the intent to imitate an earlier used trademark. The purpose to add such provision is to clarify that the Act aims to maintain the order of fair competition in the market but not to restrict the scope to be applied for. Therefore, when doing the examination under this provision, contractual, geographical, or business connections, or any other relationship shall be taken into consideration as what the current Act operates. | |
| Applications are filed after the amended Act comes into force. | ● | ||||
| 12 | Exclusive or non-exclusive license | Recordation of license is requested before the amended Act comes into force and has been approved when the amended Act comes into force. | ● |
In principle, when two parties have reciprocally declared their concordant intent, a trademark license agreement shall be constituted. Recordation is not the precondition for the agreement to take effect. Therefore, when the recordation of license has been approved before the amended Act comes into force, whether it is a kind of exclusive license, it shall be judged based on the clauses agreed by both parties. It is unnecessary to amend the recordation of license.
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| Recordation of license is requested before the amended Act comes into force but hasn’t been approved when the amended Act comes into force. | ● |
Prior to the enforcement of the amended codes of Administrative Procedure, cases under examination shall, unless otherwise specifically provided there in, be concluded in accordance with the amended codes of Administrative Procedure.
When the recordation of license is a kind of exclusive license, the licensor or licensee may request for recording the license as an exclusive license.
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| Recordation of license is requested after the amended Act comes into force. | ● | The proprietor of a registered trademark may grant a person an exclusive or non-exclusive license to use, within a designated locality, his registered trademark in connection with all or part of the designated goods or services. | |||
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(Source: TIPO News dated January 01, 2012)
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JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES 10-1FL., NO.23, SEC.1, CHANG-AN E. RD., TAIPEI 10441, TAIWAN, R.O.C TEL: 886-2-25310876 FAX: 886-2-25812761 http://www.jaw-hwa.com.tw E-mail: jawhwa@jaw-hwa.com.tw |