SASIMOTO / Shutterstock.com
15 May 2023TrademarksMuireann Bolger

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.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk

More on this story

Jurisdiction reports
1 August 2011   On May 31, 2011, the Legislative Yuan passed an amendment to the Trademark Act, which was revised in 2003.
1 September 2013   This year’s revision of the Taiwan Patent Act brings the country’s law closer to international norms. That’s good news for applicants, say Jessica Chen and Peggy Wu.