Law & Practice

TAIWAN: Proposed Changes to Trademark Act

Published: June 9, 2021

Crystal J. Chen

Crystal J. Chen Tsai, Lee & Chen Patent Attorneys & Attorneys at Law Taipei, Taiwan

Verifier

Yvonne Lin Formosan Brothers Attorneys-at-Law Taipei, Taiwan

The Taiwan Intellectual Property Office (TIPO) proposed a draft amendment to the Trademark Act (the Draft) in January 2021. Aiming at restructuring the remedial proceedings for trademark matters, the Draft proposes a revolutionary change related to review of rejections and dispute resolution. The timeline is uncertain, as this is a draft version TIPO proposed and has not yet been submitted for legislative review.

The current administrative remedy for a rejected trademark application or a decision of opposition/invalidation/cancellation of a mark is to appeal to the Board of Appeal under the Ministry of Economic Affairs (MOEA), with a possible further appeal to the Intellectual Property Court (IP Court). In the administrative appeals, TIPO is an adversary and bears the burden to respond.

The Draft proposes the creation of a “Trademark Review and Dispute Adjudication Board” (TRDAB) as an independent division within TIPO. The proposed TRDAB will serve as the second review of trademark rejection and TIPO’s other decisions, such as acceptance of priority rights and change of trademark rights.

The new review board also embraces a dispute resolution function to adjudicate trademark-related contentious matters, such as invalidation and cancellation. Cases will be adjudicated by a panel of three or five examiners. In a contentious matter, unless otherwise agreed by both parties or determined by TIPO, an oral proceeding and/or a preparatory proceeding may be conducted to strengthen the adjudication and have a thorough debate between parties. A preparatory proceeding involves organizing the disputed points, evidence investigation, and an exchange of briefs and responses.

The Draft restructures the entire dispute resolution procedure from adjudication at TRDAB to remedial litigation at the IP Court. According to the Draft, any party not satisfied with the decision rendered by TRDAB may directly appeal to the IP Court. Thus, the Board of Appeal under MOEA would no longer be an appellate level for trademark matters.

Under the Draft, the Code of Civil Procedure is adopted; contentious trademark litigation will instead become an adversarial proceeding between two parties in a dispute, releasing TIPO from being a named party. An adversarial proceeding means it will be a litigation between the trademark holder and the challenger, unlike the current administrative litigation where TIPO is always named. However, TIPO will still be an adversarial party for litigation filed against TRDAB’s second review decisions.

Meanwhile, opposition, invalidation, and cancellation mechanisms will remain available to those looking to challenge a trademark registration. The Draft proposes to merge opposition and invalidation proceedings. While only an interested party may initiate invalidation on a relative ground of refusal, any party will be able to invalidate a trademark based on absolute grounds of refusal. Any prior trademark rights holder seeking to challenge a later registration similar to the prior mark should be aware that proof of actual use of the prior mark may be required before filing invalidation.

It is foreseeable that the new proceeding will increase difficulties to invalidate or cancel a trademark and incur additional costs for parties involved. TIPO will receive viewpoints from industries and further changes may be made. The timeline is uncertain, as this is a draft version TIPO proposed and has not yet been submitted for legislative review.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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