The Amendment to Taiwan’s Trademark Act, which was passed by Taiwan’s Congress in May 2023, has taken effect on May 1, 2024. One notable aspect of this amendment is the introduction of the Accelerated Examination Program for trademark applications, as stipulated in Article 19.8. In accordance with this new article, where trademark applicants require timely registration of their trademarks, they may file with the IP Office requests for accelerated examination setting out the facts and reasons, along with payment of an applicable official fee. This article, however, does not apply to a trademark application where the IP Office has issued an Official Letter requesting amendments or raising a refusal.
Besides, the IP Office has issued “Operating Procedures for the Accelerated Examination Program for Trademark Applications”, which has also come into force as of May 1, 2024. The key highlights are summarized as follows.
I. The following two types of trademark applications are suitable for the Accelerated Examination Program:
- all the designated goods/services in a trademark application have been in actual use or been substantially in preparation for use under the applied-for trademark; and
(1) The “actual use” refers to use of the applied-for trademark in Taiwan.
(2) The “substantially in preparation for use” refers to a state where the applied-for trademark is very close to being put to use on the market.
- part of the designated goods/services in a trademark application have been in actual use or been substantially in preparation for use under the applied-for trademark by the applicant (or its licensee), and there is a necessity or an urgency for the applicant (or its licensee) to claim its rights in the business.
Any of the following conditions shall be construed as the necessity and urgency for the applicant to claim its rights for commercial concern:
(1) A third party has used the applied-for trademark or substantially prepared for use of the same without the consent of the applicant.
(2) The applicant has received a warning letter from a third party asserting infringement associated with the use of the applied-for trademark.
(3) A third party has requested to obtain license to use the applied-for trademark.
(4) There has been a plan to launch goods/services under the applied-for trademark on the market and related sales or distribution contracts with collaborating firms.
(5) There has been a plan to display the applied-for trademark in exhibitions and related contracts with the exhibition organizers.
(6) There is other evidence proving the necessity and urgency for the applicant to claim its rights for commercial concern.
II. The procedures for the Accelerated Examination Program are summarized below:
- The applicant shall file a request for accelerated examination along with the trademark application or, at the latest, before the IP Office issues the first examination result.
- Traditional and non-traditional trademark applications are eligible for accelerated examination program. This program, however, is not applicable to applications of certification marks, collective marks, and collective trademarks.
- The applicant must specify the facts and reasons in the request and submit evidential materials, including evidence of actual use of the applied-for trademark meeting the following requirements:
(1) The trademark appearing in the evidence must be exactly identical with the applied-for trademark shown in the trademark application form.
(2) The evidence must bear a date and the name of the user.
(3) The evidence must show use of the trademark by the applicant on its own or by its licensee(s) and not by any unauthorized third party.
- The official fee payable for requesting accelerated examination of a trademark application is NT$6,000 per class.
III. The time frame for the accelerated examination is as follows:
A request for acceleration examination of a trademark application is accepted by the IP Office upon the payment of the official fee. The IP Office shall issue the first examination result to the application within two months of acceptance of the said request and issue the final examination result within fifteen working days upon receiving the applicant’s response to the first examination result.
It is expected that the introduction of this new Accelerated Examination Program will offer greater flexibility to trademark applicants and enhance the efficiency of obtaining timely trademark registrations.