Blocking trademark registrations via third-party submissions in Taiwan

On 20 June 2019 the Taiwan Intellectual Property Office’s (TIPO) new Examination Guidelines titled Third-Party Submissions came into force. Here, a ‘third-party submission is defined as a submission made during the pendency of a trademark application before TIPO’s examination decision, in which any person may provide information on a mark in an attempt to prevent its registration.

Background

Third-party submissions have been accepted by TIPO for more than 20 years. However, as this process was not previously regulated in the Taiwan Trademark Act or related laws or regulations, many were unaware that this process was available, apart from trademark professionals. The promulgation of these guidelines is meant to encourage anyone to submit information in order to improve the accuracy and speed of examinations.

Outline of the guidelines – third-party submissions

What can be challenged?

According to the following articles of the Trademark Act, a pending trademark application, which does not satisfy the requirements for trademark registration or which falls under the grounds of unregistrability as a trademark, may be challenged.

Articles 29-I, 29-3

If the mark is devoid of distinctiveness, this is grounds for refusal of registration. Further, a disclaimer for the right to exclusive use is required.

Articles 30-1, 30-4

The following are considered grounds for refusal of registration:

• if a subject mark is identical or similar to another person’s prior registered trademark and used on or with the same or similar goods/services and there is a likelihood of confusion among the relevant consumers (identical or similar to a prior registration);
• if a subject mark is identical or similar to another person’s unregistered well-known trademark, and there exists a likelihood of confusion among the relevant consumers (identical or similar to a well-known trademark); or
• if a subject mark is identical or similar to another person’s prior used unregistered mark that is used on or with the same or similar goods/services, and the applicant intends to imitate the prior used trademark, being aware of the existence of the prior used trademark due to contractual, regional or business connections or any other relationship with the owner of the earlier used trademark (bad-faith application).
   

Article 65-3 – the restriction of a revoked mark

A mark that was revoked due to an arbitrary change to it that makes it identical or similar to another person’s registered trademark used on or with identical or similar goods/services cannot be registered by the former owner of the revoked mark or transferred or licensed to such former owner within three years from the day following the date of the revocation.

Who is allowed to file a submission?

Third-party submissions can be filed anonymously and by anyone apart from the applicant.

What is the filing period?

A submission must be filed by a third party before the application for a trademark registration is resolved or approved. If the application has been withdrawn, not accepted, approved or rejected, the submission will not be accepted.

How to file a third-party submission

Third-party submissions must be made in writing. If the submission and related attachments/supporting evidence/documents are not submitted in writing, or are submitted by CD or electromagnetic records, the examiner may not use the reference materials to examine the application.

What is the cost?

No fees are incurred or charged to the person who files a third-party submission.

Decision by the examiner

A third-party submission is submitted to the examiner handling the trademark application. If the examiner finds that the submission complies with the rules, they will forward the third-party submission to the applicant and request it to submit a defence. If the examiner does not forward the third-party submission to the applicant, they cannot reject the subject application based on the third-party submission.

No feedback from the examiner to the third party

As the third party does not take any part in the application, the examiner will not notify it of the status, result or decision of the third-party submission.

With regard to preventing the registration of a trademark application, the third-party submission is similar to an opposition procedure, as the third-party submission is meant to enhance protection for trademark owners. Although TIPO does not notify third parties of the decision or result of the third-party submission, the third party or its agent is able to monitor the developments of the subject trademark application and know its examination result when it is announced on TIPO’s database. According to TIPO’s legal department, a third-party submission system will be formally regulated into the Enforcement Rules of the Trademark Act in the future.