Trademark Law amendment passed 3rd reading; sounds, shapes to be registrable subject matter
E030430Y2 May. 2003（E44）
The Legislative Yuan passed on March 29 the third reading of draft amendment to the Trademark Law, which extends the scope of trademarks to include goods and services, allows sounds and 3D shapes to be constituents of a trademark, and allows the trademark to be used on digital audiovisual products or electronic media, in addition to commodities or 2D graphs.
A total of 50 articles are amended, 40 newly added, and 23 deleted in this amendment. The new Trademark Law provides that sounds and 3D shapes can also be registrable subject matter. The representations and protection of trademarks will become even more diversified as a result.
To be in line with the international tendency for electronicalization, the said amendment will provide for the legal basis for electronic filing of trademark applications to facilitate the examination thereof. The amendment will reinforce the protection for well-known trademarks or certification marks to protect the right holders in conformity with the international trend. Additionally, with the deletion of service mark provisions, trademarks are extended to be used on goods as well as services.
The representations of trademarks are amended in response to the development of e-commerce and the internet. Trademarks can be used, for the purpose of marketing, on goods, services or other related objects, or by way of 2D graphs, digital audiovisual works, electronic media or other intermediaries.
The amendment also prevents trademark registration of a functional 3D shape or designs that are likely to dilute the distinctiveness or reputation of a well-known trademark or certification mark. Also, for the protection of geographic indications for wines and spirits, registration of a mark composed of words referring to a geographical indication not the place of origin of the product to which the trademark would be applied will be denied.
The main points of the draft amendment to the Trademark Law are as follows:
1. Extending the definition of trademark to include goods as well as services;
2. Relaxing the law and simplifying administrative procedures;
3. Allowing sounds and 3D shapes to be constituent elements of a trademark
4. Adopting the system which requires a trademark examiner to sign on his written decision;
5. Reinforcing the protection for well-known trademarks;
6. Allowing one application to be designated with cross-classes goods or services;
7. Introducing division system which allows division of an application, goods or services, or trademark rights;
8. Adding trademark registration fees which may be paid in installments;
9. Defining the scope of trademark rights;
10. Adopting post-registration opposition system to shorten the time for acquiring trademark registration;
11. Abolishing associated trademark system and phasing out defensive trademark system;
12. Abolishing the substantive review on trademark renewal;
13. Providing border controls against infringing products;
14. Providing legal basis for the registration of indications of origin, and
15. Providing rules concerning group trademarks.
