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【Trademarks】Highlights of the Draft Procedures for Accelerated Examination of Trademark Registration..

2024-02-29 Zhu-Ping WANG, Trademark Consultant

 
  1. What is the "Accelerated Examination" System? In the "Partial Amendment of the Trademark Law" passed by the Legislative Yuan on May 9, 2023, the accelerated examination mechanism was added, stipulating that regardless of whether the trademark application is for traditional trademarks such as text and graphics or non-traditional trademarks like three-dimensional, color, sound, etc., the applicant, when there is an immediate need to obtain rights, may state the facts and reasons, pay the accelerated examination fee, and have the trademark authority conduct an accelerated examination. This allows the trademark to be prioritized for examination, enabling the applicant to obtain the result of the trademark application examination as soon as possible. The difference between this system and the current "Fast Track System" lies in the fact that the "Fast Track System" only requires three conditions to be met: 1. Use of electronic filing, 2. The designated goods or service descriptions match exactly with the reference descriptions in the Intellectual Property Office's electronic application system, and 3. Completion of online payment. Meeting these three requirements, the application automatically qualifies as a fast-track case. A fast-track application can receive a notification of examination result about two months earlier than the regular application. In contrast, the "Accelerated Examination" requires a separate application for accelerated examination out of the trademark application. Upon payment of the accelerated examination fee and with no corrections needed during the process, a notification of approval or rejection from the Intellectual Property Office can be received within two months.
  2. Conditions for Accelerated Examination: In order to prevent applicants from arbitrarily using accelerated examination and causing exclusion of general trademark applications, the Trademark Law specifically stipulates that the ”necessity of immediate acquisition of rights” is a requirement for accelerated examination. Applicable types include:
    1. All goods or services designated in the trademark application have been actually used, or substantial preparations have been made for their use:
      (a)
      "Actual use" refers to the use of the trademark within our country's borders. The determination of use should comply with the Article 5 of the Trademark Law.
      (b)
      "Substantial preparations for use" refer to a situation where the trademark is close to being marketed in the market. The applicant should specify the specific goods or services prepared for use and the marketing locations prepared for use. For example, providing samples of goods or services marked with the trademark, advertising printed matters, orders, advertising contracts, business plans, etc., as supporting documents to prove that the trademark is about to be used commercially.
    2. The applicant (or the authorized person) has already used the trademark on part of the designated goods or services, or has made substantial preparations for use, and there is a necessity and urgency to assert rights in business:
      The so-called "necessity and urgency in business" situations include:
      (a)
      Third parties are using the trademark without consent or are making substantial preparations for use.
      (b)
      Received infringement warnings regarding the use of the trademark from the third party.
      (c)
      Third parties are requesting licensing for the trademark.
      (d)
      The trademark has been planned for market launch, with sales or distribution contracts established with cooperating manufacturers.
      (e)
      The trademark has been planned for exhibition, with contracts established with participating units.
      (f)
      Other circumstances sufficient to prove the necessity and urgency in business.
    For the aforementioned "necessity of immediate acquisition of rights," the applicant should state the facts and reasons, and provide specific evidence. The presented evidence must have the trademark identical to the trademark specimen as filed and must correspond to the designated goods/services. Evidence may include physical items, photographs, packaging, containers, purchase orders for signage, receipts for decoration expenses, contracts, shipping documents, export declarations, advertisements, catalogs, posters, promotional materials, or other business documents with the trademark. For services related to the trademark, evidence may include business documents, and photographs of business premises with the trademark, along with proof of service income such as unified invoices, receipts, estimates, or advertising certification documents.
  3. Conclusion
    The Intellectual Property Office has currently announced the draft of the "Procedure for Accelerated Examination of Trademark Registration Applications" and will schedule its implementation in accordance with the amendment date of the Trademark Law. As accelerated examination is a new system in Taiwan's trademark application practice, the application for accelerated examination must include the necessary facts, reasons, and evidence for immediate acquisition of rights. These aspects will also affect whether a trademark application meets the conditions for accelerated examination. Therefore, when planning trademark strategies or when there is a need for accelerated examination, it is recommended to seek professional assistance from professional agents to ensure immediate protection of rights.
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