Major Amendment Proposed on Trademark Act. Scent, Motion Marks Will Be Registrable.

TIPO held a public hearing on 25 August 2008 on the proposed amendment to the Trademark Act.  The amendment proposed which is expected to change two thirds of the current provisions marks a major revision with the provision of 38 articles to be revised, 23 articles to be added and 8 articles to be removed).  The most recent major amendment was made in 2003.  According to the amendment proposed, three types of non-conventional marks will be added to the list of registrable marks: scent marks, motion marks and hologram marks.

TIPO is admitting more and more types of marks as registrable in line with the spirit of the Singapore Trademark Law Treaty (STLT) with a view to promoting industrial development and protecting the successful result of businesses’ efforts.  But this also means increased complexity to the trademark authority in handling trademark applications.  Further, the applicant will be required to fulfill the burden of proof by presenting the mark the registration of which is being sought for in literary, pictorial, or symbolized form.  For scent or motion marks, the applicant will have to describe how the mark will distinguish iteself from another’s mark clean of possible consumer confusion.  The relevant examination criteria will be detailed in the enforcement rules of the amendment enacted.

Further, exhibit priority right provided in Article 17-2 of the proposed amendment will allow the supplier who introduces its new product and new trademark at an international trade show to cite the date of that trade show for the filing date of the application (if any) for registering the new mark, which must be filed within six months after the trade show.  The international trade show means a trade show held abroad or at home where there are foreign products put on exhibit.

Gist of the amendment proposed
Article	Content
Article 5	Three types of non-conventional marks --motion marks, scent marks and hologram marks are included as registrable marks.
Article 17-2	Priority claim. (New)  TIPO is incorporating the relevant provisions of TRIPS in the proposed amendment without regard to the fact of Taiwan not being a member state of the Paris Convention.
Article 22-1; Article 38-2	Trademark application, assignment, division, reduction in licensing
Article 33; Article 33-1	Additional provisions on clear distinction between the effect of exclusive patent licensing and non-exclusive patent licensing which is particularly important in the event of infringement.

(2008.8)
/EMA