【Trademarks】Key Points of Draft Amendment to Taiwan Trademark Act in 2023
On March 9, 2023, the Meeting of Executive Yuan passed the “Draft Amendment to certain articles of the Trademark Act” and sent it to the Legislative Yuan on March 17 for review and approval . It would be promulgated and implemented after the Legislative Yuan has passed it through the third reading. Compared with the current Trademark Act, the amendment to some provisions of the Trademark Act this time has significant changes. The following is a brief introduction to some of the key points of this draft amendment:
- Abolish opposition procedure:
According to the current Trademark Act, after the trademark is approved for registration, if a third party claims that the trademark shall not be registered, the registration of the trademark may be canceled through the opposition or invalidation procedure. The legal provisions on which an opposition and an invalidation could be claimed are the same, the difference being that the opposition must be filed within three months of the registration of the trademark and the person who opposes a registered trademark may be “any person”, whereas the invalidation may be filed within five years of the registration of the trademark in principle and the applicant for the invalidation is limited to “interested parties”. However, according to the statistics of the Taiwan Intellectual Property Office (TIPO), there is a high degree of overlap between the main reasons for opposition and invalidation cases. In the current opposition procedure, as high as about 97% of the oppositions are filed against the relative grounds for refusal of registration of the trademark, which is highly overlapping with the effect that the application of invalidation is limited to “interested parties”. Therefore, the draft amendment abolishes the opposition system and loosens its restrictions so that “any person” could apply for invalidation of trademarks that violate the absolute grounds for refusal of registration. - New section on “Reexamination and Dispute Trial”:
(1)Establishment of the Reexamination and Dispute Trial Board: In the draft amendment, it stipulates that the Re-examination and Dispute Trial Board would be established in the competent authority of trademark (i.e., TIPO) to conduct the trials on reexamination cases and disputed cases. In addition, in order to ensure the quality of professional judgment in trademark reexamination cases or disputed cases, cases would be deliberated by three or five judges in a collegial manner. Among them, for the disputed cases, it stipulates oral trials and preliminary proceedings. In addition, in the process of trials, appropriate publicity of evidence evaluation and notice of trial conclusion would be implemented.(2)The Reexamination and Dispute Trial Board is responsible for two types of cases:
I. Reexamination cases: refer to the reexamination cases where applicants are dissatisfied with the decisions of reexamination of trademark registration application, as well as the reexamination cases where applicants are dissatisfied with the disposition of the trademark registration application procedure and the procedure of changes to trademark rights. According to the current Trademark Act, as for the refusal of application for trademark registration and the disposition of the trademark registration application procedure or the procedure of changes to trademark rights (e.g., the disposition of non-admission or refusal), the applicant shall file a petition to the Ministry of Economic Affairs if any opposition. In the draft amendment, the hearing of this part of remedies is transferred to the Reexamination and Dispute Trial Board.
II. Disputed cases: refer to the trademark invalidation and revocation. Among them, according to the object of protection, the grounds for invalidated cases are mainly social public welfare or private interests of specific people. They could be divided into “absolute grounds for refusal of registration” and “relative grounds for refusal of registration”. The former refers to the circumstances stipulated in Paragraph 1 of Article 29 and Subparagraph 1 to Subparagraph 8 of Paragraph 1 of Article 30 of the Trademark Act, and any person could apply for invalidation. The latter refers to the circumstances stipulated in Subparagraph 9 to Subparagraph 15 of Paragraph 1, Article 30 or Paragraph 3, Article 65 of the Trademark Act, and only the “interested party” could apply for invalidation. In addition, in principle, “oral trial” shall be adopted for disputed cases, and written trial could only be adopted in exceptional circumstances. However, it is different in the current Trademark Act that it adopts written trial for trademark opposition, invalidation, and revocation. The trial of disputed cases also takes into account the provisions of the Code of Civil Procedure and the Commercial Case Adjudication Act, and has established procedures such as preparatory procedure, appropriate publicity of evidence evaluation, and notice of trial conclusion. - New section on “Reexamination and Dispute Litigation Cases”:
The draft amendment stipulates that, if applicants are dissatisfied with the trial decisions on the trademark reexamination cases and disputed cases, such cases could be filed directly to the Intellectual Property and Commercial Court without having to go through the appeal procedure. In the draft amendment, there is a big difference between the provisions of this part with that in the current Trademark Act. The current Trademark Act includes four remedy levels for the remedy procedure of disputed cases. However, in the draft amendment, it stipulates that parties concerned could directly file a lawsuit if they disagree with the trial decision and deletes the appeal procedure.
In addition, as for trademark dispute litigation, the draft amendment holds that trademark dispute cases belong to the adjudication procedure of private rights disputes, that is, the Reexamination and Dispute Trial Board acts only as an adjudicator. Therefore, if the disposition result of the dispute is not satisfied, the other party shall be taken as the defendant to file a lawsuit (namely “adversary system”). It is different from the current Trademark Act, which takes the competent authority of trademark for making the decision as the defendant. Moreover, trademark dispute litigation is similar to civil litigation in nature. Therefore, the jurisdiction of trademark dispute litigation is changed to the civil court, and the parties concerned shall file a civil lawsuit to the Intellectual Property and Commercial Court. In the part of trademark reexamination litigation, in order to avoid the remedy system being too complicated and causing public confusion due to review litigation and dispute litigation come under the jurisdiction of administrative courts and civil courts respectively, the draft amendment has classified the reexamination litigation under the jurisdiction of civil courts. Taking the competent authority of trademark as the defendant, parties concerned could file the reexamination lawsuit to the Intellectual Property and Commercial Court, and it is a civil lawsuit in nature. Since the draft amendment has classified the reexamination and dispute litigation under the jurisdiction of civil courts, is the remedy level of litigation the same as that of civil cases with the three-tier and three-instance system implemented? In this regard, the draft amendment clearly stipulates that trademark reexamination litigation and dispute litigation shall adopt the two-tier and two-instance system. The first instance is under the jurisdiction of the Intellectual Property and Commercial Court, and the second instance is the trial of law by the Supreme Court. - Compulsory representation by lawyers in dispute litigation cases:
In order to protect the rights and interests of the parties concerned and make the trademark dispute litigation more efficient, the draft amendment clearly stipulates that a lawyer shall be appointed as the agent ad litem in the trademark dispute litigation, and the trademark reexamination litigation and the appeal of the dispute litigation shall also adopt the compulsory representation by lawyers. - Perfect the qualifications for acting as trademark agents and update relevant administrative measures to protect the rights and interests of trademark applicants:
When revising the Trademark Act in 2011, the provisions that “only certified trademark attorneys shall claim themselves as the professionals” were deleted, but the management mechanism of trademark agents was not standardized. The current Trademark Act only stipulates that the trademark agent shall have a domicile in the ROC. However, trademark related regulations are highly professional. Especially in cases involving trademark type, commodity and trademark dispute, the agent needs to be familiar with the relevant laws and regulations and practical operation of the trademark. Therefore, the draft amendment adds that trademark agents shall pass the trademark professional competence certification examination held by the competent authority of trademark or have engaged in trademark review for a certain period of time, apply for registration and complete on-the-job training every year before they could carry out trademark agency business. Through the trademark agent qualification and administrative measures, the rights and interests of the applicant or the trademark owner shall be protected.
