Accelerated Examination of Trademark Applications in Taiwan

05/10/2024

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Accelerated Examination of Trademark Applications in Taiwan

To accelerate the examination of trademark applications in Taiwan, the Trademark Act was amended on May 24, 2023, adding a new provision to Paragraph 8, Article 19, which allows applicants who need to immediately acquire trademark rights to apply for accelerated examination. The amendment came into effect on May 1, 2024. To help applicants prepare for the accelerated examination and provide guidance for the examination, the "Operating Procedures for Accelerated Examination of Trademark Applications" were announced on April 30, 2024. The main aspects of the accelerated examination application are outlined below:

I.      Applicable Case Types

1.         Cases where all goods or services designated in the trademark registration application have been actually used or substantial preparations have been made for such use.

Here, "actual use" refers to the use of a trademark in commerce (as per Article 5 of the Trademark Law) within the jurisdiction of Taiwan. Even if the trademark has not been actually used, if the applicant has made "substantial preparations for use," it would still meet the requirements for accelerated examination.

In the latter case, the applicant should specify the timing of the intended use of the trademark, the specific goods or services prepared for its use, and the marketing channels or places of intended use, and may submit supporting materials indicating the planned use of the trademark. Evidence of substantial preparations for trademark use include samples of goods or services, advertising documents, orders for promotional materials, advertising contracts, and business plans.

2.         Cases where some of the goods or services designated in the trademark registration application have been actually used or substantial preparations have been made for such use, and there is an urgent necessity to acquire rights in commerce, which includes the following situations:

(1)   the applicant discovers that the trademark is being used or substantial preparations are being made for its use by a third party without its consent;

(2)   the applicant is warned about infringement due to the use of the trademark in question;

(3)   a third party requests authorization for the trademark in question;

(4)   market release for the trademark in question is planned, and sales or distribution contracts have been concluded with partner companies;

(5)   exhibition of the trademark in question is planned, and contracts with exhibiting units have been made; and

(6)   other circumstances that satisfy the commercial necessity and urgency of obtaining rights.

The evidence of actual trademark use must be identical to the trademark applied for. Differences in capitalization, text layout, color, or a combination with other text/graphics that alter the presentation of the trademark would render it unacceptable for accelerated examination.

Additionally, the evidence of actual trademark use must correspond to the designated names of goods or services. However, if the actual goods or services used differ from those designated but are the same conceptually, they may still meet the requirements.

II.    Procedure

1.         Applicants should submit evidence corresponding to the type of claim between filing the trademark application to receiving the first examination notice from the Taiwan Intellectual Property Office (“TIPO”).

2.         Traditional and non-traditional trademark applications are eligible for accelerated examination, except for certification marks, collective marks, and collective trademarks, which are not.

3.         An official fee of NT$6,000 must be paid for each class.

III.  Timeframe

1.         Where submitted documents are found incomplete, TIPO will issue a notification to rectify within 10 working days of receiving the application (approximately 15 working days for paper applications).

2.         Applications meeting the requirements for accelerated examination should generally receive TIPO's first examination notice within two months of filing.

3.         After the rectification or response, and if no other rectification is required, a decision will be made within 15 working days of receiving the rectification or response.

However, in any of the following circumstances, even if the requirements for accelerated examination are met, TIPO may still not be able to make a decision within a short period:

1.         the meanings of the designated names of goods or services are overly broad or unclear, making it impossible to refer to goods or services that are actually used or for which substantial preparations have been made;

2.         the trademark is non-traditional, such as three-dimensional, color, smell, or sound, or exhibits a continuous pattern, and requires submission of supporting documents to prove its distinctiveness; or

3.         the trademark is involved in a dispute, meaning TIPO would have to wait for the outcome of the dispute before making a decision.