It has been a longstanding practice that third parties are allowed to submit comments and evidence of their own accord in pending trademark applications. In a bid to specify its current practice, the Taiwan IP Office (TIPO) promulgated a set of Guidelines on Third-Party Submissions Made in Trademark Application Proceedings on June 20, 2019. The Guidelines took effect on the same day.
The gist of the Guidelines is as follows:
- There is no restriction on a third party’s standing. A Third-Party Submission can be considered even if it is filed anonymously, suppose other requirements are met.
- A Third-Party Submission will not be considered if it is filed after the subject application has been dismissed, rejected or approved by the TIPO or withdrawn by the applicant. A third party’s filing of a Supplemental Submission is acceptable if it observes the same time restriction.
- A Third-Party Submission will not be considered if it is filed in a non-written form.
- A Third-Party Submission will not be considered if the arguments contained do not address any registrability issue of the subject mark, or if the arguments lack supporting materials that are relevant and admissible.
- A Third-Party Submission alleging the subject trademark infringes on a copyright, patent, or any other right will not be considered absent submission of either (i) a certificate issued by a court of competent jurisdiction proving that a relevant civil judgment has become final and irrevocable; or (ii) a document proving that the an infringement lawsuit has been filed with a court of competent jurisdiction. However, the Registrar in charge may suspend the subject trademark application waiting for the final outcome of a relevant pending civil action indicated in a Third-Party Submission.
- A Third-Party Submission cannot be adopted as a factual basis upon which the TIPO rejects a trademark application, unless the Registrar in charge has duly served the Submission on the applicant and offered him a chance to reply.
- No Registrar is required to reply to the third party upon receipt of his Submission, nor is any Registrar required to notice the third party of the final examination result of the subject application.
- The Guidelines provide no remedies for a third party not satisfied with the allowance of the subject mark in spite of his pre-issuance submissions. However, the third party can still file an opposition or invalidation action against the registration of the mark under the provisions of the Trademark Law.