Taiwan amends TM Act in bid to enhance owners’ rights
Several provisions introduced to enhance trademark owners’ rights | Amendment promises to speed up the examination process for those facing litigation or launching new products.
Taiwan has unveiled a partial draft amendment to its Trademark Act, which offers several new provisions including an accelerated examination for applications for trademark registration.
According to the updated act, a speedier examination is now possible for those who need to gain their trademark rights quickly.
This is aimed at supporting owners faced with infringement litigation or who have just launched new products.
Applicants can submit facts and reasons for acceleration, pay a fee of NTD 6,000 ($195), and have the examination period shortened to two months.
Acceleration requests, however, are unavailable for cases in which the Taiwan Intellectual Property Office (TIPO) has issued an official letter requesting an amendment or a response from the applicant, or an advance notice of reasons for disapproval.
New agent management system
Another new provision proposes a system for managing trademark agents, allowing those equipped with professional knowledge of trademarks and who have completed registration and training to handle trademark matters as trademark agents.
Further, the amended act now stipulates circumstances that are nominative ‘fair use’ and ‘not infringement’.
For example, a mobile phone repair shop using a sign that shows the trademarks of various mobile phone brands to indicate the services it provides does not qualify as trademark infringement under the amended act.
Additionally, the updates simplify the customs detention process, removing the need for a trademark owner to identify the infringement at customs in person when an article is deemed likely to infringe the trademark owner’s right.
As long as the trademark owner has completed the registration for trademark rights at the Taipei Customs Office, they may then determine whether there is infringement related to a suspected item based on the photos of the article on the Customs Office’s online platform.
In addition, TIPO proposed another set of partial draft amendments to the Taiwan Trademark Act concerning the examination of opposition and invalidation and processes of remedies, trademark exhaustion, and requirements for registering trademarks with functionality.
