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Newsletter Taiwan (May 2024)

Jaw-Hwa International Patent & Trademark & Law Offices Taiwan


Trademark

 

Introduction to New Trademark System Effective as of May 1, 2024 in Taiwan

 

1) Introduction:

 

The draft of the amendment of the Trademark Law has officially come into effect on May 1, 2024 in Taiwan. The new system includes the accelerated examination of registration applications, addition of qualified applicants, clarification of specific circumstances for the use of others' trademarks with claims of fair use, simplification of procedures for trademark owners to be notified by customs for infringement determination, and the establishment of a trademark agent registration and management system. Hereafter, we are pleased to provide an overview of the new system.

                             

2) Accelerated Examination (Article 19, Paragraph 8)

 

1.           When a trademark applicant has an "immediate need to acquire rights," the applicant may apply for accelerated examination by stating the facts and reasons.

               

2.           The "immediate need to acquire rights" can be divided into two situations:

              (1)         If all goods or services have been actually used or are ready for use, evidence of trademark use must be provided.

                             

              (2)         If only some goods or services have been actually used or are ready for use, and there is a commercial necessity and urgency, such as third-party infringement, receipt of third-party infringement warnings, third-party requests for authorization, planned contract signings for listing or exhibition, relevant evidence must be provided, such as warning letters, exhibition contracts, etc. If no evidence is provided, within 10 days upon receiving the applicant’s request of accelerated examination, the TIPO will request to supplement the documents. Failure to supplement the required documents within the stipulated time will result in non-acceptance, and the trademark application will proceed according to the regular examination schedule.

                             

              (3)         The evidence of use must be within "Taiwan territory" and cannot be claimed to have been used in other countries.

                             

3.           Official fee: NT$6000, per class. Please contact us for the complete quotation for this work.

               

4.           Processing time for accelerated examination: 2 months.

              Currently, the average examination time for completing the examination of trademark application is approximately 5 to 8 months, while "fast-track cases" (all designated goods/services are from the standard lists of the TIPO) take about 4 months.

               

5.           Application Timing:

              The application should be submitted after obtaining the application number and before the issuance of the first examination notice.

               

6.           Cases to avoid applying for Accelerated Examination:

              The applications with broad, unclear, or controversial descriptions of goods or services, or non-traditional trademarks (such as three-dimensional, olfactory, and color trademarks) are not recommended for accelerated examination due to their complexity, which cannot be finished examination within 2 months.

               

7.           Accelerated examination is only applicable to "trademark applications" and "dispute cases" cannot apply for accelerated examination.

               

3) Addition of Eligible Applicants (Article 19, Paragraph 3)

In response to the practical needs of business entities in the market, it is specified that partnerships (such as law firms, and architectural firms), legally established non-corporate groups (such as temples, associations, production and marketing cooperatives), and legally registered sole proprietorships or partnerships can be eligible trademark applicants and obtain the capacity to sue.

 

4) Clarification of Specific Situations for Using Another's Trademark, with the Right Claim Fair Use (Article 36, Paragraph 1, Subparagraph 2)

It is stipulated that indicative fair use not bound by trademark rights is recognized. For example, in advertisements for mobile phone and communication repair services, using the trademarks of various phone brands to indicate the brands of phones serviced by the business does not raise concerns of infringement.

 

5) Simplification of the Procedure for Trademark Owners to Determine Infringement through Customs Notifications (Article 75)

In line with the simplification of border protection measures by the Customs Administration of the Ministry of Finance, trademark owners can first check potential infringements through photo files provided by customs platforms. If necessary, they can then personally visit customs for infringement determinations

 

6) Registration and Management System for Trademark Attorneys:

To ensure transparency of information regarding trademark agents and to protect the interests of applicants and trademark owners, the TIPO has implemented a registration and management system for trademark attorneys. Please be assured that all trademark attorneys in our firm are professionals who have been duly registered in accordance with the law.

Jaw-Hwa International Patent & Trademark & Law Offices



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