I. Trademark Accelerated Examination in Taiwan
On May 9, 2023, the amendment to the Trademark Law successfully passed the third reading in the Legislative Yuan, introducing a new system for accelerated examination for trademark applications in Taiwan. It is expected to be implemented by the end of this year or early next year. The details are outlined below:
1. Generally, it takes about six to eight months for the examination of a trademark application. For the one with the request for accelerated examination time, the examination will be completed in two months.
2. Official fee for accelerated examination: NTD6000(currently roughly USD197).
3. Requirement: Partial or all goods and/or services have been used or are ready for use, with urgency and necessity.
4. The followings are some examples of “necessity”:
(1) The trademark is being used by a third party in infringement.
(2) The applicant receives a warning letter concerning the trademark infringement.
(3) The trademark is required by a third party for license.
(4) The applicant already has a contract for planned sales in the market for the trademark.
(5) The applicant already has a contract for exhibition participation for the trademark.
5. The request of accelerated examination should be avoided for the following kinds of applications, such as:
(1) The designated goods or services are broad or unclear.
(2) It is a kind of three-dimensional trademark or sound trademark.
(3) It involves in controversial cases.
In the above situations, the examination results cannot be issued within two months since they either need to be corrected or deferred during the examination process. It will affect the effectiveness of accelerated examination.
6. Process: Confirm payment of fees → Confirm whether the facts are stated with supporting evidence (a notice of correction will be issued within 10 days) → Issue an examination result within two months.
(1) No official notice will be issued for failure to pay the official fee, and it will be considered as not submitting a request for accelerated examination.
(2) If the necessary facts and reasons are not stated, an official notice for correction will be issued within 10 days. Failure to correct this will result in the examination proceeding according to the regular schedule, and the accelerated examination fee will not be refunded.
II. Case Study: Analysis and Strategies of the “Monster Energy” Trademark Cases in Taiwan
The trademark holder of “Monster Energy and device” is Monster Energy Company, a US- based entity (hereinafter referred to as “ Monster Energy”). Despite the company's vigorous efforts to protect its trademark rights, it has faced repeated challenges in establishing the fame of its trademarks for “Monster Energy” and “Monster Energy and device”. We studied the reasons behind the Court's denial based on the administrative judgments of the Intellectual Property and Commercial Court in 2023 (hereinafter referred to as “the Court”). It aims to summarize the grounds for the Court's rejection and propose strategies for similar cases.
2. Background Facts:
Monster Energy is highly concerned about trademarks containing the word "monster" used by other parties. From 2018 to October 25, 2023, Monster Energy has filed a total of 75 dispute cases in Taiwan. 90% of these cases involve objections to trademarks that include the word "monster" in their text. A smaller portion of cases pertains to the cancellation of trademarks featuring the "M design," the Chinese characters "野獸" (wild beast), or "怪獸" (monster). The trademarks that Monster Energy seeks to cancel are not limited to beverage-related products but extend to various fields, such as apparel, wallets, toys, boxing gloves, milk, ice cream, and more. Monster Energy is determined to maintain the uniqueness of their trademarks and is strongly unwilling to see the word "monster" used by others in different fields.
3. The Court's reasons for not recognizing the fame of the trademarks owned by Monster Energy:
(1) Most evidence is the use in foreign countries instead of Taiwan, making it challenging to determine how many Taiwanese consumers have actually come into contact with this data.
(2) Limited domestic evidence of use in Taiwan.
(3) Lack of "dates" or indications of the presence of the trademark.
(4) Discrepancies between the information on "sponsorship of sports events" and the way the trademark is used in marketing the goods.
4. Recommended Strategies:
(1) Aggressive advertising in Taiwan:
A. Invest in extensive advertising campaigns in Taiwan to enhance brand visibility.
B. Utilize both online and offline platforms to reach a wide audience.
(2) Product placement and promotion:
Ensure that the products are prominently displayed and available in both online and physical stores. This will contribute to the accumulation of substantial evidence of product usage in Taiwan.
(3) Strategic timing of disputes:
Instead of continuously filing disputes with significant legal costs, consider strategically timing the submission of controversial cases. Within the five-year term for filing disputes, focus on building brand recognition first.
(4) Economic considerations:
While Monster Energy has significant financial resources, it is advisable to weigh the cost-effectiveness of repeatedly submitting similar evidence and receiving unfavorable judgments. Allocate resources judiciously.
(5) Evidential improvements:
Incorporate the Court's feedback into the advertising strategy. Address issues raised by the court, such as the absence of dates or trademark indications. Ensure that advertisements prominently display dates and trademarks. When presenting evidence in future dispute cases, highlight these elements clearly using methods like highlighting with a fluorescent marker or attaching label notes to clearly identify key areas.
(6) Simplify presentation for reviewers:
Given the volume of cases and the workload of reviewers, simplify the presentation of evidence. Emphasize crucial details such as dates, trademarks, and key points to facilitate the review process.
(7) Gaining knowledge from Court feedback:
Learn from the guidance provided by the Intellectual Property Office and the Court. Implement specific measures based on their feedback to enhance the quality and clarity of evidence presented in disputes.
It is important to establish brand familiarity and accumulate robust evidence of use in Taiwan. This will significantly strengthen the case for trademark fame.
It is recommended to file oppositions or invalidations against others only after accumulating a substantial amount of evidence sufficient to establish the fame of a trademark. Otherwise, once a precedent denying the fame of the trademark is established, the subsequent effort to overturn it will undoubtedly face increased challenges. Enterprises actively asserting the fame of their trademarks are typically of medium to large scale with substantial financial resources. How to maximize the utilization of company funds and obtain more favorable judgments in dispute cases involving famous trademarks is a critical consideration.