TIPS^®  Taiwan Intellectual Property Special

Summary of the Newly Amended Trademark Law

The Amendment to the Trademark Law in Taiwan (Trademark Law Amendment) was passed on April 29, 2003, and promulgated on May 28. According to Article 94 of the Trademark Law Amendment, the new law will become effective 6 months after the promulgation, i.e., November 28, 2003. The major revisions are summarized as follows:

1. eliminating the term of “service marks,” and extending the meaning of “trademark” to cover marks used for services and goods.

2. adding collective trademarks to distinguish services or goods provided by business associations, clubs, or social organizations or members thereof. After the amendment, there are 4 types of marks: trademarks, certification marks, collective marks, and collective trademarks;

3. recognizing the registrability of sound and three-dimensional marks;

4. allowing multi-class applications;

5. abolishing the requirement of the “bona fide” intent to use for registering a mark;

6. adding a registration fee (issuance fee), which can be paid in 2 stages;

7. In order to shortening the trademark prosecution period, changing pre-registration opposition to post-registration opposition;

8. eliminating the substantive examination for renewal application;

9. strengthen the protection of famous marks. Marks that are similar to or are likely to dilute a famous mark are not registrable. Moreover, knowingly using a mark that is identical or similar to a registered famous mark of another and caused dilution to the distinctiveness or goodwill of the famous mark is deemed to be trademark infringement;

10. providing boarder-control of goods that infringes trademark rights;

11. adding geographic certification marks to certify the origin of goods;

12. strengthening protection for geographic indications of alcoholic beverages. Complying with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), a geographic indication is not registrable on alcoholic beverage unless the beverage is from said geographic location;

13. providing reasonable protections to the names of juristic persons, companies or other organizations;

14. abolishing associated marks;

15. expanding the definition of “use” for the trademark purpose to embrace use in e-business and on the Internet; and

16. abolishing the requirement of an “interested party” for initiating an trademark cancellation.

The amendment is a significant change to the trademark system in Taiwan. The Taiwan Intellectual Property Office (TIPO) is working on the enactment of relevant administration and operational procedures, such as guidelines to register sound and three-dimensional trademarks, how to handle the registered and pending service marks, and regulations for opposition, invalidation and cancellation. We will report to you the newest development as soon as any information becomes available.