Formosa Transnational - Taiwan
On 1 July 2021 the Taiwan Intellectual Property Office (TIPO) announced that a second version of the adversarial system for trademark disputes will be added to the draft amendments to the Trademark Act.
The country’s Trademark Act has not been substantially revised in nearly 10 years. In order to optimise the trademark system and to keep up with international practices, TIPO, domestic experts and scholars have looked to revisions to trademark systems in Japan, the United States and Germany, among other countries. TIPO has drafted amendments to the Trademark Act with the aim of:
- strengthening its deliberation procedures;
- enhancing examination efficiency; and
- revising the remedial levels and litigation proceedings in accordance with the constitution’s aim of protecting the people's right to remedy.
The most discussed and debated portion of this draft amendments is the adversarial system, which replaces the administrative appeal procedure that has been in use since the enactment of the Trademark Act on 6 May 1930.
The amendments can be summarised as follows:
- Those who contest TIPO’s decisions will be able to file lawsuits in court instead of going through the administrative appeal procedure.
- The current administrative litigation procedure has been changed to a civil litigation one.
- As the role of the opposition procedure is highly redundant with regard to the existing systems identified below, the draft amendment eliminates the opposition procedure and replaces it with :
- third-party submissions, in which any person may provide trademark information in an attempt to prevent registration of a trademark pending application examination; and
- invalidation actions, which allow interested parties to remove trademark registrations.
Current status of the proposed amendments
There are three amendments to the Trademark Act, all at different stages of progress. The main contents and stages of progress of the three draft amendments to the Trademark Act are as follows.
Expand the scope of trademark infringement – the requirement of an infringer acting ‘knowingly’ is replaced by ‘intentional’
(to coordinate with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership).
Before the Executive Yuan
Trademark agent registration system to replace the current practice where any adult citizen in Taiwan can be a trademark agent.
Accelerated examination system for trademark applications.
Before the Executive Yuan
The adversarial system for trademark disputes (draft amendment).
The legislative process
It takes a substantial amount of time for a draft amendment to be formalised. TIPO proposes and drafts an amendment, which is then passed on to the Ministry of Economic Affairs, then to the Executive Yuan for review and modification, and finally to the Legislative Yuan for review and deliberation and formal amendment through three successive readings.
Looking to the future
Portion 3 is the most complicated of the draft amendments, as it involves a significant change in the judicial system. Although it will take approximately two years to become a formal amendment, if successful, Taiwan looks forward to providing more comprehensive protection to trademark rights holders and to general consumers.