TIPS^®  Taiwan Intellectual Property Special

The Ministry of Economic Affairs Announced the Draft Bill of Trademark Law in March

The Ministry of Economic Affairs in March announced the draft Bill of Trademark Law (the “Bill”). The Bill reflects a broad revision on Trademark Law of 1993 aiming at the goal to comply with the relevant provisions of TRIPs and to accommodate the Trademark Law to the trend of the development of Internet.The major revisions provided in the Bill can be summarized as follows:

1. The Sound or three-dimensional object used in a mark can be registered as a trademark as long as such sound or three-dimensional object is distinctive enough to cause a general consumer of goods to recognize it as a mark for identifying the goods of a certain manufacturer and distinguishing such goods from those manufactured or sold by others.

2. To reflect the trend of the Internet, the Bill provides that the use of a trademark referred to in the Trademark Act will include the use of the mark on the Internet or multiple media via electronic transmission.

3. Add the provision regarding the restriction of trademark registration. Therefore, no application may be filed for registration of a trademark design which will sabotage or dilute the identification or the good will of a famous mark or has the likelihood of dilution.

4. In reference of Article 23 II of the TRIPs, the Bill provides that no application may be filed for registration of a trademark used on the alcohol product if the product was not produced in the specific territory.

5. In applying for registration of a trademark, an application with the denomination of the goods designated for use of the trademark indicated therein can be designated in multiple classes.

6. The Bill revises the opposition procedure. Therefore, the IPO will approve the registration of a trademark application as long as such trademark has been found, after examination by the IPO, to be in conformity with law. Any person instituted an opposing proceeding against the approval of a trademark application should file the opposing proceeding within 2 months after the publication of such registration.

7. The regime of registration of an associated trademark is deleted and the regime of registration of a defensive trademark will be gradually deleted.

8. In order to protect the trademark licensee’s interest, the Bill provides that the licensing agreement shall be inure and binding to the assignee of the trademark if the trademark owner transfers her trademark to others.

9. The Bill provides that any party dissatisfied with the decision of approval of registration or the decision of canceling the right to the exclusive use of a trademark can directly file an administrative suit with the Administrative Court without first filing an administrative appeal, provided that, the decision is made after a thorough review and oral discussion.

10. In order to avoid “cyber-squatting,” the Bill prohibits the use of a trademark design which is identical with or similar to another person’s famous mark, and prohibits any person from using another person’s famous mark as his company name, business name, domain name, or other identification mark.

11. To comply with the provision of TRIPs, the Bill provides the registration regime for geographical identification mark.