Draft amendment of the Trademark Act sets outs big system overhaul

Taiwan’s Intellectual Property Office (TIPO) has now published draft amendments to the Trademark Act. The draft proposes substantial changes to existing examination processes relating to trademark applications and invalidation/cancellation actions, as well as related remedial procedures. 

Examination

Currently Taiwan has a two-stage examination system for trademark applications: formality examination followed by substantive examination overseen by a single registrar. In general, if the registrar intends to reject a trademark application, they will issue at least one official letter to allow the applicant to file observations before issuing a formal rejection. If the applicant is dissatisfied with a formal rejection, they can file an appeal with the Board of Appeals and then an administrative litigation with the IP and Commercial Court (IPC Court).

According to the draft amendment, a new committee – the Committee for Review and Dispute Resolution – is to be set up within TIPO to independently review all formally rejected cases and examine invalidation and cancellation actions.

The committee will be composed of senior registrars designated by TIPO to ensure that all cases and examinations are handled with professional excellence. In particular, three or five members from the committee will form a panel to oversee review and examination matters; one of them will be appointed as the presiding panelist to coordinate all relevant matters and to ensure that the review/examination process is conducted efficiently. 

While all review cases are examined in written form, unless a specific request is filed by the applicant or at the discretion of the registrar, invalidation or cancellation cases are examined primarily via oral hearings. If the panel considers that the two parties have adequately expressed their opinions through oral debates, it will issue a decision within one month. In order to enhance the effectiveness of oral hearings, the panel may outline the points of contention between the two opposing parties and disclose its opinion to them, to an appropriate extent.

In general, the types of cases to be reviewed/examined by the committee include the following:

• formally rejected trademark applications;
• trademark applications that have been formally dismissed with regard to documents, designated goods/services or denied priorities claimed;
• other dismissed procedures (eg, change/waiver of ownership, licensing, assignment and pledge recordals), as well as renewals;
• invalidation actions; and
• cancellation actions.   

Appeals

A significant change introduced into the draft amendment is the abolishment of appeal proceedings (at the Board of Appeals). If the applicant or the losing party is dissatisfied with a decision rendered by the committee, they can no longer attend appeal proceedings at the board but should directly file a civil litigation with the IPC Court to seek a judicial review of the decision. The court system for judicial review remains two tier; however, the litigation will shift from administrative to civil proceedings. In invalidation/cancellation cases the opposing party shall be named as the defendant, rather than TIPO. On this score, the two parties may participate directly in the oral hearings and express their opinions exhaustively. Moreover, the losing party, if dissatisfied with the judgment rendered by the IPC Court, may further appeal the case to the Supreme Court.

Oppositions

Given that opposition procedures are substantially the same as invalidation procedures in terms of the function and objective thereof and that a third-party observation may be submitted during the prosecution of a trademark application to rectify any examination loopholes, opposition procedures are to be abolished for the sake of judicial economy. In the meantime, the limit on the qualification for filing an invalidation action based on absolute grounds of rejection is relaxed so that an invalidation action can be filed by any party for any reasons specified in the Trademark Act.

Reviews

If a request for review of a formally rejected trademark application or an invalidation/cancellation action against a registered trademark is filed, the following procedures are allowed only before a decision is issued by the committee:

• filing a divisional application;
• amending an applied-for trademark in a non-material manner;
• restricting the scope of the designated goods/services; and
• entry of disclaimer.