Newsletter
Taiwan Trademark Act Amendments Passed
On 9 May 2023, the Legislative Yuan passed the Amendments to Trademark Act which were promulgated by the President on 24 May 2023 and the enforcement date of said Amendments will be determined and announced by the Executive Yuan. This Amendments include the accelerated trademark examination mechanism, the establishment of a new management system for trademark agents, and defining nominative fair use does not constitute trademark infringement, etc. However, the abolition of the opposition procedure, the establishment of an independent agency dedicated to reviewing trademark remedy cases in the draft amendments have not been passed by the Legislative Yuan.
The main points for the Amendments are as follows:
I. Adding the accelerated examination mechanism for trademark registration applications (Article 19, Article 94, Article104)
In order to meet the needs of the domestic industry to obtain trademark registrations timely, the applicants may request the trademark authority to expedite examination procedure by stating reasons and paying accelerated examination fees. However, expediting examination request is not available for those trademark applications to which an official action or a provisional objection has been issued.
II. Partnership, Unincorporated Body, and Sole Proprietorship can be Qualified as Trademark Applicant (Article 19-III, Article 99)
In response to the actual needs of the entities operating in the market, stipulated that partnership (such as law firms, architect firms), legally established unincorporated body (such as temples, associations, production and marketing groups), and legally registered sole proprietorship or partnership can be qualified as trademark applicant with litigation standing.
III. Nominative Fair Use of a Trademark does not Constitute Infringement (Article 36)
Defining nominative fair use does not constitute trademark infringement. For example, using registered trademarks on advertising signs to indicate that repairing services are provided for various registered brands of mobile phones will not constitute infringement.
IV. Simplify the Customs Notification Procedure for Determining Infringement (Article 75)
Cooperating with the Customs Administration of the Ministry of Finance to simplify the operation procedures of border protection measures. The trademark owner can first judge through the photos provided by the customs platform, and then decides whether it is necessary to go to the customs to confirm the infringement.
V. Establish a Management Mechanism for Trademark Agents and Protect the Working Rights of Current Trademark Practitioners (Article 6, Article 12, Article 109-1)
It is clearly stipulated that only those with qualified trademark professional ability and registered with the trademark authority can act as trademark agents. The trademark authority is responsible for the management of qualified trademark agents and a list of qualified trademark agents shall be prepared for external inquiries.