The Timing for Assessing Registrability of a Trademark: What If a Trademark becomes Registrable during an Opposition Process?
[ The Timing for Assessing Registrability of a Trademark: ] >BackAccording to Article 29, Paragraph 1 of the Trademark Act in Taiwan(“§29I” hereunder), trademarks that lack distinctiveness cannot be registered. Distinctiveness can be categorized as "inherent distinctiveness" or "acquired distinctiveness." The distinction lies in whether the trademark is inherently distinctive as a unique mark or if it acquires distinctiveness through subsequent uses. A mark that lack inherent distinctiveness may be recognized by relevant consumers as a trademark through actual and commercial, especially a long-time, sales and use. If a mark acquires distinctiveness before an opposition or invalidation decision is made, and the lack of distinctiveness no longer exists by that time, should the registration still be canceled? The Supreme Administrative Court's Judgment No. 463 of 2022 provides a detailed analysis of this issue.
First and foremost, when the Intellectual Property Office (IPO) makes a registration decision, it generally considers the distinctiveness at the time of the registration. §29 governs situations where trademarks lack distinctiveness and cannot be registered, while §30 specifies other circumstances where registration is prohibited. The rationale for the amendment of §30 indicates that the previous wording "cannot apply for registration" led to the practice of assessing registrability at the time of application. However, since trademarks require IPO’s review before registration, and the process usually takes several months, conditions may change during that period. The legislator revised wording from “cannot apply for registration” to "cannot be registered", stating that “If the reason for refusal no longer exists at the time of review, and there are no risks for the public or private interest, it is unreasonable to issue a refusal based on the status of the trademark at the time of application.” Thus, the decision is generally based on the status at the time of the registration.
§30II specifically provides that the evaluation of geographical indications, famous trademarks or person, and malicious trademark squatting is based on the status at the time of application, thereby clarifying the legislators’intent that the status of registrability under other provisions is determined at the time of registration.
Oppositions against a trademark must be filed within three months of the publication of the registration. Invalidation applications cannot be filed more than five years after the publication date. This framework ensures that the opposition process serves to validate the legality of trademark registrations in a short period, enhancing the credibility of trademark rights. §60 stipulates that if an invalidation application is upheld, the registration should be canceled, unless the grounds for non-registrability no longer exist and non-cancellation outweighs the cancellation on the balance of public and private interests. The legislator here emphasize that this balance is critical when evaluating the compact to trading order when invalidating a trademark registration. However, since oppositions must be filed within three months of publication, the impact on trading order is relatively minor, thus excluding oppositions from the scope of §60’s proviso.
Therefore, if an opposition is filed on the grounds of lack of distinctiveness, even if the trademark acquires distinctiveness during the opposition process, the IPO should still uphold the opposition and cancels the registration. In subsequent litigation, administrative courts should base their assessment of the trademark's distinctiveness on its status at the time of the registration, rather than at the time of opposition or the suit.
First and foremost, when the Intellectual Property Office (IPO) makes a registration decision, it generally considers the distinctiveness at the time of the registration. §29 governs situations where trademarks lack distinctiveness and cannot be registered, while §30 specifies other circumstances where registration is prohibited. The rationale for the amendment of §30 indicates that the previous wording "cannot apply for registration" led to the practice of assessing registrability at the time of application. However, since trademarks require IPO’s review before registration, and the process usually takes several months, conditions may change during that period. The legislator revised wording from “cannot apply for registration” to "cannot be registered", stating that “If the reason for refusal no longer exists at the time of review, and there are no risks for the public or private interest, it is unreasonable to issue a refusal based on the status of the trademark at the time of application.” Thus, the decision is generally based on the status at the time of the registration.
§30II specifically provides that the evaluation of geographical indications, famous trademarks or person, and malicious trademark squatting is based on the status at the time of application, thereby clarifying the legislators’intent that the status of registrability under other provisions is determined at the time of registration.
Oppositions against a trademark must be filed within three months of the publication of the registration. Invalidation applications cannot be filed more than five years after the publication date. This framework ensures that the opposition process serves to validate the legality of trademark registrations in a short period, enhancing the credibility of trademark rights. §60 stipulates that if an invalidation application is upheld, the registration should be canceled, unless the grounds for non-registrability no longer exist and non-cancellation outweighs the cancellation on the balance of public and private interests. The legislator here emphasize that this balance is critical when evaluating the compact to trading order when invalidating a trademark registration. However, since oppositions must be filed within three months of publication, the impact on trading order is relatively minor, thus excluding oppositions from the scope of §60’s proviso.
Therefore, if an opposition is filed on the grounds of lack of distinctiveness, even if the trademark acquires distinctiveness during the opposition process, the IPO should still uphold the opposition and cancels the registration. In subsequent litigation, administrative courts should base their assessment of the trademark's distinctiveness on its status at the time of the registration, rather than at the time of opposition or the suit.
The grounds for refusal of registration and the time to decide whether the grounds occur:
| Decision Time | Grounds for Refusal or Cancellation | Reference |
| Application for Registration | Using a geographical indication, malicious squatting of trademark, and using a well-known trademark or the name of a well-known person or entity. | §30II |
| Registration | Generally, all refusal grounds are determined based on the status at this time. | §29、§30I(except for grounds stated in §30II) |
| Opposition | No grounds are determined based on the status at the time of the file or decision of the opposition. | The Supreme Administrative Court's Judgment No. 463 of 2022 |
| Invalidation | Generally, no grounds are determined based on the status at the time of the file or decision of the invalidation. However, if the ground for cancellation no longer exists at the time of invalidation, a disposition to overrule such invalidation may be rendered upon considering the need for proportionality between the interests of the public and the interests of the parties. | §60 |