Amendment Including the New Qualification of Trademark Agent and the Accelerated Examination is Passed
The Legislative Yuan passed an amendment to the Taiwan Trademark Act on May 9, 2023. There are five main aspects to the amendment; of these, the most notable are the provisions regarding the new qualification of the Trademark Agent and the introduction of the Accelerated Examination, both of which are of particular relevance to applicants and IP practitioners.
The five main aspects are summarized as follows.
1. New Qualification of the Trademark Agent
Under the current system, any person may act as an agent to apply for trademark registration and related matters on behalf of an applicant. However, those applications filed by an applicant not domiciled in Taiwan are subject to compulsory representation. In order to strengthen the protection of applicants' interests and to build an agent management system, the scope of an eligible agent will be limited to two types of professionals, namely Trademark Agents and those authorized to practice trademark-related matters in accordance with the law.
According to the Taiwan Attorney Regulation Act and the Taiwan Certified Public Accountant Act, the legal practices of attorneys-at-law and certified public accountants (CPAs) include trademark-related matters, so they will continue to be qualified in this regard after the amendment takes effect. In addition, so as not to affect the interests of current practitioners, those who have engaged in providing trademark registration services in the past but are not an attorney-at-law or CPA will be allowed to register as a Trademark Agent if they have presented ten applications per year for the past three years. For those who do not have such qualifications or practice records but intend to practice, a Trademark Professional Competence Certification Examination organized by the Taiwan Intellectual Property Office (TIPO) will serve as the examination for certification of trademark practitioners.
2. Introduction of the Accelerated Examination
In order to promote the use of the e-filing platform, TIPO introduced the Fast-Track Examination Program for applications filed through the e-filing platform in 2020. However, the number of applications made through this program currently accounts for more than sixty percent of new applications. Considering foreign practices and the applicants' need for early acquisition of rights, TIPO plans to introduce a fee-based accelerated examination mechanism.
According to the statistics published by TIPO, the average First Office Action pendency and the average total pendency in 2022 are 5.2 months and 6.5 months, respectively, and the pendency may be longer due to the increase in the number of new applications. The amendment will provide the basis for the introduction of a fee-based accelerated examination program. If an applicant states the reasons and the facts for urgently requiring a trademark right, TIPO will conduct an expedited examination upon receipt of an additional official fee. However, the details have yet to be finalized and announced by TIPO.
3. Simplification of the Infringement Determination Procedure for Customs and Border Protection
Under the current law, Customs, in the course of performing its duties, shall notify the trademark owner when it suspects the imported or exported articles to have infringed the trademark right. After receiving the notification, the trademark owner should identify the articles at issue on-site within twenty four (24) hours and then submit evidence of infringement within the next three working days. Regardless of whether the time limit is reasonable or not, in light of contemporary technology and foreign practices, it is possible for trademark owners to determine through photographs only whether or not it constitutes an infringement. Therefore, trademark owners will no longer be required to confirm in person at Customs.
4. Broadening the Scope of Eligible Applicants
According to the previous interpretation of the Taiwan Constitution, an unincorporated association has no legal capacity under substantive law but does have the capacity to be a party. In other words, an unincorporated association is not an eligible applicant to file a trademark application with TIPO but is an entity protected under the Taiwan Trademark Act and procedural law. In view of the need for unincorporated associations to trade in the market under their names, the scope of eligible applicants has been expanded to include partnership organizations (e.g., law firms and architectural firms), unincorporated associations established under the law, and sole proprietorships or partnerships registered under the Business Registration Act.
5. Clarifying Indicative Fair Use of a Trademark
Fair use of a trademark can be further classified into descriptive fair use and indicative fair use. Indicative fair use refers to a third party using a registered trademark to indicate the goods or services that it provides; examples of this include using a registered trademark to indicate that the component is compatible with the trademarked products, providing repair services for the trademark owner's goods, and appearing in commercial transactions such as comparative advertisements. According to the precedent of the Taiwan Intellectual Property and Commercial Court, the Court may consider the likelihood of confusion among relevant consumers in analyzing whether or not it constitutes indicative fair use. Therefore, the amendment adds an indicative fair use provision based on this precedent in order to clarify the definition of indicative fair use.
In sum, the amendment to the Taiwan Trademark Act focuses on solving current practical issues in order to protect the interests of applicants. The effective date of the amendment has yet to be determined. For the next phase, the Legislative Yuan will continue to deliberate on a further draft amendment regarding the introduction of an adversary system in invalidation proceedings.
Please contact info@tsailee.com for any inquiries.
|