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Trademark |
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Draft Amendments of Trademark Act |
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As we informed you in our Newsletter of December 2018, TIPO has invited experts and scholars to several seminars for studying over some issues under the themes “Trademark examination” and “Trademark Protection” on whether and how to proceed with the amendments to the Trademark Act, the Enforcement Rules of the Trademark Act and/or the Examination Guidelines. Now, after intensive discussions, draft amendments to the Trademark Act are made. Here is a brief introduction to the issues indicated in the draft amendments. We will introduce the detailed amendments to each Article to be amended/deleted/added in the Trademark Act in our future newsletters when the amendments are publicly announced.
Among all articles which will be amended, one article is listed as a priority. In the United States, the European Union or Japan, applicants can request for Accelerated Examination for a trademark application if the legal requirements are satisfied. Although since 2018, it takes only about 5 months for receiving the first Official Notice and 6.7 months for receiving the result of the examination (Notice of Allowance) for the trademark filings in Taiwan, TIPO still kept receiving lots of requests about the need of an Accelerated Examination mechanism. Thus, in the draft amendments, regulations for requesting Accelerated Examination for the trademark applications are added.
In total, 14 articles will be amended and two new articles will be added. We conclude the main points of the draft amendments to the Trademark Act as follows:
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1.
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Regulations for the request of Accelerated Examination for trademark applications will be introduced. |
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In case the applicant deems that they need to acquire the trademark right immediately (for example, the products will be launched to the market soon), TIPO requires to have the corresponding regulations for accepting such requests. Therefore, with reference to the regulations of AEP of invention patent, in the draft amendments, TIPO adds corresponding regulations for Accelerated Examination to fulfill the demands of the markets and the trademark applicants. |
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2.
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The entities that are qualified as trademark applicants will be clearly defined. |
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To clearly define the entities that may have no legal capacities but still can be qualified as trademark applicants, the draft amendment adds a paragraph to specify that an applicant (for a trademark application) means natural persons, legal persons, partnerships, administrative agencies, unincorporated groups established under the law or business registered under the Business Registration Law who wish to run business with the designated goods and/or services. |
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Regulations for the certified copy of the priority document will be relaxed. |
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In the original Paragraph 4 of Article 20, Trademark Act, it states as follows: “The applicant shall submit, within three months from the day following the date of filing of the application, a copy of the application certified as admitted by the country or the member of the WTO referred to in the preceding paragraph.”
In the practice, trademark applications can be registered in less than 6 months in some countries. When filing a trademark application in Taiwan and claiming the priority of a corresponding foreign trademark application, the corresponding foreign trademark may already be registered in the foreign country. Thus, in the draft amendment, TIPO deletes the wording of “application” so that the certified document shall not be limited to the filing document when filing the trademark with priority claim in Taiwan.
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4. |
The range of trademark right for the part of the trademark which obtains the acquired distinctiveness (the secondary meaning) or has functionality will be clarified. |
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The original Paragraph 3 of Article 29, Trademark Act states: "Where the reproduction of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise of doubt as to the scope of the trademark rights, the applicant shall state that he/she disclaims any exclusive right to such element. Such a trademark without a disclaimer shall not be registered.”
In the proposed draft amendment, the following description will be added for clarification: "However, in case the said element acquires distinctiveness after use, such trademark can be registered without a disclaimer.”
As to the functional part in the trademark, the following description will be added in Paragraph 4 of Article 30: “Functional part in the trademark should be indicated with dotted lines. In case the functional part of the trademark cannot be indicated with the dotted lines (such as sound or odor), it is required to claim that the functional part forms no part of the trademark for the registration.”
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The meaning of “trademark fair use” will be further defined. |
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Regarding the term “trademark fair use”, it includes “descriptive fair use” and “indicative fair use”. “Descriptive fair use” means that the using of the mark is not to indicate the source of goods or services, but merely to describe its own goods or services, which will not be regarded as trademark use. . “Indicative fair use” means that a third person uses the trademark of another registrant to indicate the goods or services of the trademark registrant, and the third person does not use the trademark registrant’s trademark as his own trademark. The two types of fair use are different in nature. The current article defines the “descriptive fair use” only, so the draft amendment will add a new paragraph regarding “indicative fair use”. |
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Regulations related to invalidation will be relaxed. |
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If the registration of a trademark infringes the copyright, patent or other rights of another person, after the judicial decision is made, the registration of the trademark obtained based on the infringement will lose its legality. Thus, the draft amendment adds a new regulation that the interested party can file an invalidation action on the ground of the said judicial decision. And, the 5-year time limitation for filing an invalidation action will not be applied under such a circumstance. |
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New regulations related to invalidation on the ground of recoverable legal interests will be added. |
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Referring to Article 72 of Patent Act, a new Article with a similar effect will be added in the draft amendment regarding invalidation on the ground of recoverable legal interests. Article 72 of Patent Act states: “Where the interested party possesses recoverable legal interests due to the revocation of a patent, such interested party may file an invalidation action after the said patent has become extinguished ipso facto.” |
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Regulations for filing a request for revocation will be relaxed. |
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Under the currenet regulation, a request for revocation may be dismissed directly if it is devoid of any concrete facts and evidence or based on obviously groundless claims. The draft amendment deletes the aforesaid subparagraph. In accordance with judicial practice, to apply for the revocation against the registration of another person's trademark, it is sufficient for the applicant of revocation to provide fair evidence to explain and establish the truth of his/her allegation. If the examiner in charge deems necessary, he/she shall notify the applicant of revocation to supplement or correct the revocation application in advance instead of dismissing it directly. |
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Source: https://www.tipo.gov.tw/tw/cp-85-803408-0ff13-1.html |
