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Main Points of Draft Amendments to the Trademark Act



Taiwan Intellectual Property Office (TIPO) of the Ministry of Economic Affairs announced on 7 January 2021 draft amendments to a total of fifty-three Articles of the Trademark Act (hereinafter referred to as the "Act"). Reasons and main points for amendment are as follows:

 

I. Establishment of an independent agency within TIPO to deliberate on trademark remedy cases

 

An "Appeal and Dispute Board" within TIPO is to be established, with the responsibility to deliberate on trademark remedy cases. Deliberation of appeals and disputes will be conducted by Appeal and Dispute Board of three or five members with mechanisms such as oral argument and preliminary proceedings. Also, in the process of deliberation, approaches such as disclosing moral conviction where appropriate and giving notice of conclusion of deliberation will be adopted.

 

The applicants who wish to contest the TIPO's decisions shall initiate appeal proceedings with TIPO's Appeal and Dispute Board within 1 month after receiving the TIPO's decisions. Trademark application reviewing cases shall be examined based on written statement; however, TIPO may order oral argument ex officio or upon request by the applicant. Trademark invalidation cases shall be examined based on oral argument; however, if necessary, TIPO may examine invalidation cases based on written statement ex officio or based on the agreement of parties involved.

 

II. Reform of remedy procedure for trademark cases

 

Those who wish to contest the decisions of Appeal and Dispute Board may skip the appeal process and directly initiate legal proceedings with the Intellectual Property and Commercial Court ("IPC Court") within 2 months after receiving the decisions. Thus, litigation and remedy procedures for trademark cases are restructured. For those trademark dispute litigation with the nature of private rights disputes will be examined in civil proceedings, with parties to the case listed as the plaintiff and defendant and the trademark rights as the subject matter of the suit. Trademark dispute deliberation and legal proceedings will serve to resolve trademark right (private right) disputes, regulating the time frames in which parties can file various means of attack and defense.

 

III. Abolishment of opposition proceedings

 

Considering that current requirements for instituting opposition and invalidation proceedings are the same and overlapping, approximately 97% of oppositions are based on relative grounds as well as current invalidation proceedings can only be initiated by an "interested party". The Act is thus amended to allow "anyone" to file an invalidation action regarding violations of trademark registration on absolute grounds for refusal, making the process equivalent to opposition proceedings. Accordingly, the opposition proceedings are abolished, leaving only two types of dispute proceedings: invalidation and cancellation.

 

IV. Transitional provisions

 

Transitional provisions are provided to determine applicability of new laws and old laws. Oppositions as well as cases that have been decided or have been given decisions prior to enactment of these draft amendments are subject to laws in force prior to said enactment. Cases not yet decided and those that have been remanded and sent back to the Trademark Office through appeal or administrative suit prior to enactment of these draft amendments shall be subject to laws in force after said enactment.

 

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