Taiwan IPO publishes and submits draft amendment to Trademark Act for Taiwan Executive Yuan’s review

　For completing the trademark legal regime, the Taiwan IPO has prepared and proposed the draft amendment to partial provisions of the Trademark Act of Taiwan.  This amendment revises 16 articles and incorporates 2 new articles and has been submitted to the Executive Yuan for examination on October 27, 2020.  

The main points of the amendment are summarized as follows.  

1.  Individuals with trademark-related knowledge and professional competence may act as trademark agents and will perform trademark agency services only upon registration.  The professional qualifications, certification, requirements for registration, training and required training hours, management measures, revocation or cancellation of registration, and any other relevant details and matters shall be prescribed and administered by the competent authority.  This amendment also introduces transitional clauses and sets forth the time limit for trademark agent registration application.  (amended Article 6 and added Article 109-1)

2.  To fit in with trademark agent management measures, this amendment requires that the competent authority should prepare and hold trademark agent directory and provide trademark agent register for inquiry.  (amended Article 12)

3.  Applicants eligible to apply for trademark registration are specified for dealing with the practical needs of different business entities engaged in the business of relevant products or services on the market.  (amended Article 19 and Article 99)

4.  The accelerated examination mechanism for trademark applications is introduced to satisfy domestic industrial demands and also to keep pace with international practices.  (amended Article 19 and Article 104) 

5.  The scope of trademark rights with respect to the functional part of a trademark is clearly defined and specified.  (amended Article 30)  

6.  To go with judicial practices, this amendment lays down the limits on effect of a registered trademark, which are nominative fair use, prior use with bona fide, and right exhaustion, etc..  (amended Article 36)  

7.  For an opposition filed based on the reason that a trademark registration infringes upon the prior rights of others as defined by subparagraph 15, paragraph 1 of Article 30 of the Trademark Act, “a final court judgment” shall be present when the opposition is filed.  The provisions shall apply mutatis mutandis to requests for invalidation and are not subject to peremption.  (amended Article 48, Article 58, and Article 62)  

8.  The procedural requirements for revocation request are relaxed.  (Amended Article 65)  

9.  The new provision is added to stipulate punishment for any individuals acting as a trademark agent without registration or recordation and the effect of publication of a trademark agent’s cessation of practice, revocation or cancellation of his/her registration.  (added Article 98-1)  (Released 2020.11.04) 

/CCS