Amended Trademark Act comes into effect on May 1, 2024

　The amendment to partial provisions of the Trademark Act promulgated on May 24, 2023 has officially taken effect since May 1, 2024 according to the Executive Yuan’s announcement.  This amendment introduces the accelerated examination mechanism of trademark applications, establishes trademark agent management system, and clarifies the scope of rights for a trademark with functional elements.  

Highlights of this amendment are summarized as follows.  

1.  Introduction of accelerated examination mechanism of trademark applications.  

Under the accelerated examination mechanism introduced by the amended Trademark Act, trademark applicants may file an application for accelerated examination by stating in the application the facts and reasons for accelerated examination and paying an application fee of TWD6,000 per class, and the processing time before TIPO issues its first official notice is expected to be shortened to 2 months.  The introduction of accelerated examination is to deal with the circumstances where there are necessity and urgency for an applicant to acquire trademark right, and these circumstances include an applicant’s need to acquire trademark rights for attending a trade show or for trademark licensing and for dealing with his/her receipt of an infringement warning from a third party, etc..  

2.  Establishment of trademark agent management system
　　
The amended Trademark Act establishes a new system to ensure trademark agents’ qualifications and competence for performing trademark agency services and to avail trademark agents’ registration management.  Regarding the qualifications for engaging in trademark agency services as set forth in the amended Trademark Act, in addition to the professionals, such as, attorneys-at-law and accountants and the trademark agents who have passed relevant competency certification examinations, those practitioners who have (a) handled 10 cases involving trademark registration applications and the applications of other procedures in each year of a period of 3 years before enforcement of the amended Trademark Act and (b) applied for registration as trademark agents within 1 year beginning from the second day of the enforcement date of the same Act, may continue to engage in trademark agency services.  This new stipulation is to ensure the rights of those trademark practitioners who have been engaged in trademark agency services and have had substantial practical experiences long before the enforcement of the amended Trademark Act.  

TIPO has made public the application form for trademark agent registration since the end of April 2024 and has also received applications from May 1, 2024.  

3.  The functional elements of a trademark should be depicted in dotted lines.  

　The functional elements of a trademark, such as, the blades of electric fans and the circular appearance of tires, will not be registrable through use of them and do not constitute a part of the trademark; therefore, the functional elements should not be included in a trademark as a whole and should not be considered for determining the likelihood of trademark confusion.  The amended Trademark Act provides that a proposed mark whose functional elements are not presented in dotted lines shall be unregistrable.  

　Moreover, for supporting the enforcement of the amended Trademark Act, relevant subordinate legislation, including “Regulations Governing Trademark Agent Registration and Management”, “Enforcement Rules of Trademark Act”, “Fee-Charging Standards of Trademark”, and “Operational Procedures for Accelerated Examination Program for Trademark Applications” have also come into force as of May 1, 2024.  (Released 2024.04.05)  
/CCS