Taiwan’s Intellectual Property Office (TIPO) published a draft Amendment of the Trademark Act on January 6, 2021 and held a series of oral hearings thereafter, looking for opinions from the public. The draft amendment substantially changes existing examination processes relating to trademark applications and invalidation/cancellation actions, as well as related remedial procedures, as explained below:
- For the present, Taiwan has a two-stage examination system for trademark applications: formality examination followed by substantive examination. One single Registrar handles all such examination matters. In general, if the Registrar intends to reject a trademark application, he/she will issue at least one Official Letter to allow the Applicant to optionally file observations before issuing the formal rejection. In case the Applicant is not satisfied with a formal rejection, he/she will need to file an appeal with the Board of Appeals and in turn an administrative litigation with the IP Court.
According to the draft amendment, a Committee which will be operating under the name of “Committee for Review and Dispute Resolution” is to be set up within TIPO for independently (i) reviewing all formally rejected cases; and (ii) examining invalidation and cancellation actions.
The Committee is composed of senior Registrars designated by TIPO to ensure that the cases under the Committee’s review or examination are handled with professional excellence. Specially, three members from the Committee will form a panel to conduct the review/examination matters; one of them is to 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 shall inform of the two parties that a Decision is to be issued within a one month’s time. In order to enhance the effectiveness of oral hearings, the panel, when necessary, may follow the preparatory procedures by outlining the points of contention by the two opposing parties, and disclosing the panel’s opinion to the two parties to an appropriate extent.
In general, the types of cases to be reviewed/examined by the Committee include the following:
(i) formally rejected trademark applications;
(ii) formally dismissed trademark applications in respect of documents, designated goods/services or denied priorities claimed;
(iii) other dismissed procedures, such as change/waiver of ownership, licensing, assignment, and pledge recordals, as well as renewals;
(iv) invalidation actions; and
(v) cancellation actions.
- 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, he/she can no longer attend appeal proceedings at the Board of Appeals but should directly file a civil litigation with the IP and Commercial Court to seek judicial review of the decision. The court system for judicial review remains to be a two-instance system; however, the litigation will shift from administrative to civil proceedings. In invalidation/cancellation cases, the opposing party, not the IP Office, shall be named as the defendant in an invalidation/cancellation action. On this score, the two parties may directly participate in the oral hearings in the capacity of the plaintiff and the defendant and express their opinions in an exhaustive manner. In order to prevent invalidation/cancellation cases from dragging on for too long, the draft amendment provides that no new evidence or grounds can be filed in civil proceedings. Moreover, the losing party, if not satisfied with the Judgment rendered by the IP and Commercial Court, may further appeal the case to the Supreme Court.
- Given that an opposition procedure is substantially the same as an invalidation procedure in terms of the function and objective thereof and that a third-party observation is allowed to be submitted during prosecution of a trademark application to rectify any examination loophole, opposition procedure is 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 ground of rejection is relaxed so that an invalidation action can be filed by any party for any reasons specified in the Trademark Act.
- 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: (i) filing a divisional application; (ii) amending an applied-for trademark in a non-material manner; (iii) restricting the scope of the designated goods/services; and (iv) entry of disclaimer.
The review and examination procedures followed by the Committee for Review and Dispute Resolution are as follows:
*NOTE:
- The following types of TM cases are eligible for review:
(i) formally rejected trademark applications;
(ii) formally dismissed trademark applications; and
(iii) other dismissed procedures, such as priority, change/waiver of ownership, licensing, assignment, and pledge recordals, as well as renewals
- Oral hearings may be held upon specific request from the applicant or when the panel deems it necessary.
- In this legal proceeding, the TIPO is named as the defendant.
*NOTE:
- An invalidation action filed based on relative grounds should be filed in 5 years from the registration date of the challenged trademark, whereas an invalidation action filed based on absolute grounds can be filed at any time after registration of the challenged trademark.
- Invalidation/cancellation actions are examined basically via oral hearings. However, upon specific request or when the examination panel deems it appropriate, they can be examined in written form.
- In this legal proceeding, the party who files a litigation with the IP and Commercial Court against the Committee Decision is the plaintiff and the opposing party is the defendant.
The proposed amendments will bring about an overhaul change to existing legal framework. Accordingly, it remains to be seen as to whether TIPO will look for further opinion from the public and propose additional modifications. Any further development will be updated.