Draft Amendment to the Trademark Act Passed During 9 March 2023 Taiwan Executive Yuan Meeting No. 3846Taiwan Executive Yuan Meeting No. 3846

03/23/2023

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Draft Amendment to the Trademark Act
Passed During 9 March 2023 Taiwan Executive Yuan Meeting No. 3846

 

According to the Taiwan Intellectual Property Office (TIPO), the latest amendment to the Trademark Act will overhaul the current trademark remedy system to offer accelerated and professional services and establish a mechanism to manage trademark agents. It is estimated that one to three years will be required for the draft amendment to be approved through legislative processes and achieve subsequent promulgation and enactment by the President. The key points in the draft amendment are summarized as follows: 

(I)             Abolishment of opposition proceedings 

Anyone citing absolute grounds for refusal of registration can file an invalidation. Furthermore, third-party submissions will be accepted during the examination of filings, which will effectively reduce reliance on opposition proceedings and public participation in trademark examination. 

(II)           Introduction of the Trial and Appeal Board (TAB), an independent agency in the TIPO for deliberation of reexaminations and disputes 

The deliberation of reexaminations and disputes will be conducted jointly by three or five examiners in the TAB. Oral arguments and preliminary proceedings will be introduced, and during reexamination procedures, disclosing moral convictions, where appropriate, and giving notice of the conclusion of deliberation proceedings will be adopted. These methods are meant to establish a more rigorous deliberation procedure. 

(III)         Abolishment of the current appeal with the Ministry of Economic Affairs (MOEA) process 

Any party dissatisfied with the decisions of deliberations should skip the appeal process with Ministry of Economic Affairs (MOEA) and directly initiate legal proceedings with the court.

 (IV)        Establishment of special "appeal lawsuits" and "dispute lawsuits"  

A party dissatisfied with a decision of deliberation regarding a dispute can file a "dispute lawsuit" against the other party in the case, who will serve as the defendant; civil rather than administrative litigation proceedings will apply. A party dissatisfied with a decision of deliberation regarding a re-examination can file an "appeal lawsuit," and civil rather than administrative litigation proceedings will apply. The court of last resort will be the Supreme Court rather than the Supreme Administrative Court.