Draft Guidelines for Hearings in Trademark Dispute Cases issued

In order to improve the standard of decision making in administrative rulings, the Taiwan Intellectual Property Office (IPO) has published draft Guidelines for Hearings in Trademark Dispute Cases. The guidelines outline a new oral hearing procedure for trademark opposition, invalidation and revocation cases. Under the current rules, the IPO bases its decisions in such cases solely on written documents provided by the relevant parties. It is hoped that hearings will help the examiners to determine the facts and clarify the issues involved.

The main points set out in the guidelines are as follows:

• A hearing may be held to clarify issues such as:
  
  
  • the distinctive quality or generic nature of the trademarks involved;
    
    
  • the likelihood of confusion or dilution;
    
    
  • the well-known status of any marks concerned;
    
    
  • allegations that an application was filed in bad faith; and
    
    
  • evidence relating to market surveys or trademark use.
    
    
• A hearing may be held at the discretion of the IPO or upon application by an interested party. If a hearing is to be held, the IPO must, among other things, notify the parties concerned 10 days prior to the hearing date.
  
  
• An examiner-in-charge will have authority over such hearings. He/she will be responsible for, among other things, requesting evidence, summoning witnesses, making necessary investigations, allowing cross-examination and taking the required steps to control order in the hearing.
  
  
• A hearing may be suspended if new evidence is submitted that requires further investigation or if both parties are willing to settle the dispute amicably. A suspended hearing may be resumed at the discretion of the examiner-in-charge.
  
  
• The examiner-in-charge shall prepare a transcript recording, among other things, statements, documents and evidence submitted by the parties concerned and their attorneys. The transcript shall be signed by the examiner-in-charge and the relevant parties.
  
  
• A hearing shall be terminated if opinions from both parties have been fully expressed and at the discretion of the examiner-in-charge. Based on Article 109 of the Act of Administrative Procedure, an administrative decision rendered after a hearing shall not be subject to appeal proceedings before a higher administrative authority within the IPO. Any party dissatisfied with such a decision must file an administrative suit directly with the Administrative Court.

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei