TIPS^®  Taiwan Intellectual Property Special

First Draft of Trademark Amendments

The Intellectual Property Office held the first public hearing on draft of trademark amendments on November 19, 1999. These amendments are intended to improve the trademark system to international standards. A summary of the amendments is as follows:

Rearranging the order of trademark provisions to eliminate current inconsistency with examination process.

Expanding the meaning of trademark to include service marks.

Providing protection to three-dimensional trademarks.

Revising the definition of "use of trademark" to accommodate the growth in Electronic Commerce and the Internet.

Providing uniform standards for the grounds on which trademarks may not be registered.

Prohibiting behaviors that dilute the identity of well-known trademarks or injure the goodwill.

Including the provision of disclaim in trademark law. Disclaim system has already been in practice in Taiwan.

Adopting the practice of multiple-classification applications.

Eliminating associated trademark system and eliminating defensive trademark system gradually as well to simplify the trademark system.

Introducing the segmented system. A trademark application can be split and the right of a registration can also be transferred on part of the goods.
Adopting the system that examiners' names have to be shown on trademark approvals or rejections.

Adding the provision of pre-notifications of trademark rejections, which has already been in effect in current practice.

Shortening the opposition period to two months.

Specifying that trademark transfers shall not affect opposition procedures.

Dividing registration fee to two periods, i.e., 5 years per payment.

Abolishing substantial examination on renewal applications.

Clarifying the trademark transfers shall not affect the registered licensing agreements.
Stating licensees' obligations of indicating the trademark licensing.

Indicating that pledge can not be made without obtaining consent from the present pledgees.

Stating that exclusive trademark right can be abandoned for all or a portion, provided that prior consent of the registered licensees or pledgees have already been obtained.

Indicating that trademarks are extinguished in three situations.

Adding provisions governing inapplicability of trademarks for a portion of the designated goods or services.

Amending that trademark registration invalidation must be filed within 5 years after the date of registration publication under most circumstances.

Including oral arguments in invalidation procedures.
Filing administrative appeal directly instead of through an appeal process.

Adding reexamination system in trademark invalidation.

Amending so-called "revocation" system to "annulment" system.

Eliminating the eligibility restriction that only interested parties may apply to annul the exclusive right of a trademark.

Providing that loss of distinctiveness can constitute a sufficient ground for annulment of trademark right.

Establishing a committee for handling trademark invalidation and annulment.

Adding criminal liability for false marking.

Providing registration of geographic indication marks.

Changing "collective marks" to "collective member marks" to clarify its applicability.

Adding the category of "collective trademarks".

Indicating clearly the inappropriate use of marks.

Providing transitional provisions from the current law to the amended law.

Stating that after enforcement of the amended law, invalidation against trademarks registered under the current law will be examined by the current and amended laws.