Taiwan IPO announces second draft amendment to Taiwan Trademark Act
E210701Y2 | Jul. 2021（E260）
On January 7, 2021, Taiwan IPO commenced the notice period for the second draft amendment to partial provisions of the Trademark Act. During the notice period for public consultation, 39 comments and suggestions had been received and gathered to formulate, after thorough deliberation and discussion, the second draft amendment to a total of 53 articles of the Trademark Act with 9 articles revised, 33 added, and 11 repealed.
Highlights of this amendment are summarized as follow based on the comparison and consolidation of this draft amendment announced herein and that announced for public comments.
1. Adjustment of the circumstances where requests for reexamination and dispute adjudication are rejected: The second draft amendment sets forth the circumstances where Taiwan IPO should issue a notice for the applicant to submit an amendment within a designated period, adjusts the wording in relevant adjusted subparagraphs, and removes paragraph 4 of Article 56-9 of the draft amendment announced for public comments (Article 56-7 and paragraph 4 of Article 56-9 of the draft amendment).
2. Adjustment of the provisions in regard to agent ad litem for reexamination or dispute lawsuits: The draft amendment specifies the circumstances where an agent ad litem may not be an attorney-at-law. (Article 67-4 of the draft amendment)
3. Repeal of required court costs for reexamination: The determination of court costs should be subject to the Judicial Yuan’s authority. In this regard, the relevant provision of Article 67-5 in the previous draft amendment announced for public comments that governs court costs is removed, and the relevant provisions of the Taiwan Code of Civil Procedure governing the determination of court costs should apply mutatis mutandis. (Article 67-5 of the previous draft amendment announced for public comments)
4. Introduction of new provisions allowing the intervener to initiate an action: The intervener’s participation in trademark reexamination and trademark dispute adjudication process has auxiliary function. Now for facilitating dispute resolution in trademark reexamination and dispute lawsuits, the draft amendment provides that the intervener of the reexamination and dispute adjudication process may also initiate an action. (Article 67-5 and Article 67-8 of the draft amendment)
5. Inclusion of grounds for submitting supplementary evidence in trademark dispute lawsuit
For enhancing remedy efficacy and giving consideration to the particularity of trademark dispute cases at the same time, the second draft amendment introduces the exceptional grounds for the party to the trademark dispute case or the intervener thereof to submit new evidence in trademark dispute lawsuit. (Article 67-9 of the draft amendment)
6. Adjustment of the applicability of transitional articles: The second draft amendment stipulates that the cases that have been decided or ordered and the cases that were remanded back to the trademark authority through administrative appeal or administration proceedings before enforcement of the amended Trademark Act shall be subject to the pre-amendment Act. (Article 109-2 of the draft amendment) (Released 2021.07.01)