Attention all brand owners! Taiwan has just introduced a “draft amendment on partial articles of the Trademark Act”, and it’s set to revolutionize the way trademark disputes are handled in the country. Say goodbye to lengthy and complicated dispute resolution procedures, and hello to a fast and professional system that saves time and cost.
This draft amendment is in response to industry feedback and in alignment with international trends, aiming to establish a mechanism for managing trademark agents to safeguard the rights and interests of brand owners. It’s a major step towards creating an intellectual property protection environment that’s more in line with industry needs.
Currently, Taiwan adopts a four-level, four-instance system for trademark validity disputes, which differs greatly from the three-level, three-instance system used by major trading countries such as the United States, Japan, and South Korea.
In fact, the primary objective of Taiwan’s four-level system was to handle intellectual property cases with caution and avoid the risk of misjudgment, however, this system has created drawbacks, including excessive complexity and delays, which have long been criticized and complained about, especially by foreign companies.
Moreover, the IPO, which originally played the role of arbitrator, frequently faced with the need to make a decision and subsequently engage in litigation to defend it, which means it becomes an easy target for lawsuits under current system. On the other hand, if the IPO accepts the plaintiff’s evidence and reasoning during the administrative litigation, and tends to revokes the trademark, this is inappropriate because the original trademark owner – whose rights will be impacted – won’t be able to protect their interests by presenting proper litigation defense methods and evidence, as they are not the litigant in the lawsuit.
So, what are the changes? Firstly, an independent agency responsible for reviewing trademark validity and disputes resolution, called the “Review and Dispute Resolution Committee” will be established within the competent authority. This committee will review patent and trademark dispute cases with a professional and rigorous procedure, ensuring efficiency and procedural safeguards for patent and trademark dispute cases.
The modifications also introduce a panel of 3 to 5 adjudicators to review trademark validity or disputes, a hearing of case and preparatory procedures will also be introduced. It also incorporates moderate publicity of mental proof and notification of review outcomes.
But that’s not all! The new system also allows direct litigation against review decisions, eliminating the administrative appeal procedure after the reexamination and disputes have been reviewed by the Committee through a rigorous and professional review procedure, which means the party who is dissatisfied with the review decisions may directly file a civil lawsuit, eliminating the currently active administrative appeal procedure. This ensures the rights of the parties to due process are protected, and improves the accuracy and consistency of rulings. Overall, the new relief system is expected to be more favorable for foreign companies operating in Taiwan.
From the brand owner’s point of view, this new system will provide a more streamlined and reliable process for protecting their trademarks that are not yet registered in Taiwan, safeguarding their brand identity and reputation. It will also help reduce the costs and time associated with resolving trademark disputes, making it easier for businesses looking to protect their intellectual property rights.
In addition, the draft amendment also implements a new “fast-track” mechanism for accelerating the review of trademark applications, which means an applicant who meet certain conditions could request an expedited review, significantly reducing the review time from an average of 7 months currently to within 2 months. To qualify for the expedited review, applicants could pay an extra fee of NT$6,000 (approximately US$200), and provide evidence of specific reasons for needing a faster review.
The fast-track paid application system is expected to accelerate the trademark registration process, providing foreign brand owners with a more efficient and timely means of obtaining trademark protection in Taiwan. This can be particularly important for businesses seeking to establish themselves quickly in the market, as it can help to prevent others from using their brand name or logo without prior permission.
All in all, the new trademark dispute resolution mechanism and fast-track paid application system are expected to bring significant benefits for foreign brand owners seeking to enter the Taiwan market. It’s a comprehensive approach to trademark protection, which can help foreign businesses plan and implement effective trademark protection strategies before entering the Taiwan market.
We look forward to this amendment of trademark act would significantly change the current inconvenient way of handling trademark disputes, and improve the efficiency of protection of intellectual property rights in Taiwan, making it more favorable for foreign investments and business activities. As a final point, it should be noted that after the draft amendment is passed by the administrative organ, it will be sent to the Congress for review, and expected to be passed by this year (2023).
Stardust IP Inc. is an intellectual property consultancy with professionalism and best conscience in handling all aspect of IP issues. The expertise, global thinking, and extensive experience in providing high-quality services to our client, bringing your idea to trademark, design, and patent in Taiwan and worldwide.
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