Key points of draft amendment to partial provisions of Trademark Act published
E210107Y2 | Feb. 2021（E255）
As indicated in Taiwan IPO’s announcement on January 7, 2021, the industry, experts and scholars have been giving advice to the Chinese National Federation of Industries and the Public Policy Participation Network Platform of the National Development Council that a trademark remedy system more fit in with local industrial needs should be established by taking the trademark system of Japan, the U.S., Germany as reference.
To better the proposed trademark remedy system, to keep abreast with international practice and by taking the trademark remedy system of Japan, the U.S., and Germany as reference, Taiwan IPO has been cautiously deliberating on the direction of changing the trademark remedial mechanism of Taiwan by strengthening the competent authority’s examination and deliberation procedures and revising the remedial levels and litigation proceedings for trademark-related cases and also proposing other amendments of relevant matters with a view to safeguarding people’s remedial rights as required by the Constitution and elevating efficiency.
Main points of the draft amendment to the Trademark Act are summarized below.
1. Consolidated remedy procedures: Those who contest trademark authority’s decisions on trademark registration applications and trademark disputes involving validity issue may directly initiate legal proceedings without going through administrative appeal procedure.
2. Reform of litigation system: The litigation procedure for trademark remedy is restructured to have cases involving trademark dispute examined in civil proceedings, instead of administrative proceedings currently adopted.
3. Removal of opposition proceedings: The removal of opposition proceedings is proposed on the grounds that (1) the third-party observation mechanism has been introduced in trademark registration application examination procedure as reference of examination, and (2) the current requirements and actionable grounds for opposition are mostly the same as those for invalidation, which is currently and statutorily available only to an “interested party”, and that brings out a fact that approximately 97% of accumulated opposition cases were filed based on relative grounds for refusal. Therefore, the proposed amendment consolidates the dispute proceedings by repealing opposition and leaving invalidation and cancellation proceedings.
The Taiwan IPO has compiled and proposed the draft amendment to partial provisions of the Taiwan Trademark Act after taking reference from the legislation and practice of Japan, the U.S., and Germany, holding several meetings with relevant experts for consultation, by consulting and discussing with the Judicial Yuan, the IP Court and the Petitions and Appeals Committee under the MOEA, and also by taking into account of and evaluating the condition and practical needs of Taiwan. (Released 2021.01.07)