Amendments to Trademark Act impose stricter restrictions on trademark agents and introduce accelerated examination system

On 1 Could 2024, the Could 2023 amendments to Taiwan’s Trademark Act entered into power. These amendments have imposed stricter regulation of trademark brokers and an accelerated examination course of.

Qualifying as a trademark agent 

International candidates with no domicile or enterprise institution in Taiwan at the moment are required to nominate an agent when making use of for trademark registration and dealing with different trademark issues.

Beforehand, the one requirement to be a trademark agent was residence in Taiwan, which didn’t essentially imply that the agent had adequate skilled information and expertise to competently prosecute trademark functions.

The brand new amendments require trademark brokers to register with the Taiwan Mental Property Workplace (TIPO) and have established guidelines outlining how the workplace will handle them. 

To register, an individual should meet sure necessities underneath Article 6. One can solely change into an agent if they’ve a domicile in Taiwan and are both: 

•  an expert who might legally deal with trademark-related issues (a lawyer or accountant licensed to follow in Taiwan); or
•  a trademark agent (some other domiciled one who has handed TIPO’s Trademark Skilled Functionality Certification Examination).

TIPO has additionally introduced particulars about the way it will handle registered brokers. It would set up a Trademark Agent Register on the official TIPO web site. Members of the general public will be capable of search the register to seek out or confirm registered trademark brokers in Taiwan. Additional, registered brokers shall be required to attend skilled coaching programs yearly.

Accelerated examinations of latest functions

At present, TIPO sometimes takes six to eight months to assessment a brand new trademark software earlier than issuing the primary official discover. In response to suggestions from model homeowners, the brand new amendments have launched an accelerated examination course of.

An applicant can apply for accelerated examination by paying an software payment of 6,000 New Taiwan {dollars} (roughly US$184) per class and stating the explanation why accelerated examination is warranted. 

Candidates should file a daily registration software and obtain an software quantity earlier than making use of for accelerated examination, which they’ll  have to file the latter software. This software for accelerated examination should be filed earlier than TIPO points its first official discover. 

Potential candidates should be conscious that certification marks, collective membership marks and collective emblems should not eligible for accelerated examination.

Upon receiving an accelerated examination software, TIPO will first verify whether or not the payment has been paid. It would then assess whether or not the provided causes meet the next standards:

•  the applicant has used – or is getting ready to make use of – the mark on or with the designated items/companies and has submitted proof of such use; and
•  the proof of use should present the very same mark because the filed mark and its use in Taiwan.

Additional, if an applicant recordsdata a multi-class software however solely wants to use for accelerated examination for a selected class, then the applying will must be divided.

Necessity and urgency for industrial causes

In every case, TIPO will assessment the information surrounding claimed urgency and necessity. It might resolve to grant accelerated examination in a number of of the next circumstances:

• if a 3rd social gathering has used the mark with out the applicant’s consent;
• the applicant has acquired a trademark infringement letter from a 3rd social gathering;
• the applicant has acquired a request to license the trademark from a 3rd social gathering;
• the applicant submits a contract displaying that it’ll attend a commerce present; or
• the applicant submits distribution contracts to show there’s a plan to launch items/companies available in the market.

TIPO started accepting functions for accelerated trademark examination on 1 Could 2024.