Draft regulations will improve quality of trademark agents in Taiwan

The Taiwan Intellectual Property Office (TIPO) has proposed changes to the Taiwanese Trademark Act 1930, which will affect the rules on being a trademark agent. The amendments aim to improve the quality and standard of trademark services by introducing requirements for – and management of – trademark agents in the Taiwan patent attorney system.

As it stands, possessing a domestic address is the only legal requirement to be a trademark agent in Taiwan. An agent’s practice usually accompanies legal consultation services, which has led to concerns over violations of the Taiwan Attorney Regulation Act. For this reason, a specialised lawyer or law firm is always highly advisable when obtaining full protection for valuable marks in the country.

The most recent draft amendments, which TIPO published on 6 August 2020, have brought about fresh discussions on service quality. If passed, the law will amend Articles 6 and 12 of the current Trademark Act, thereby creating a new professional standard for trademark agents and a trademark agency to regulate them.

Changes for trademark agents

On the appointment of trademark agents, the original text of the Trademark Act reads:

Article 6:         

An applicant, holder or other interested person may appoint a trademark agent to apply for trademark registration and related affairs. Those who have no domicile or business establishment in Taiwan shall appoint a trademark agent to apply for trademark registration and related affairs.

A trademark agent shall have a domicile in Taiwan.

Therefore, Article 6 currently states that in order to become a trademark agent, an individual need only “have a domicile inTaiwan”. TIPO’s proposed draft aims to:

• replace “related affairs” with “other procedures”;
• add a second and third paragraph to the requirements to be a trademark agent; and
• create additional management measures for trademark agents.

Accordingly, the draft reads (in non-official translation) as follows:

Article 6:         

An applicant, holder or other interested person may appoint a trademark agent to apply for trademark registration and other procedures. Those who have no domicile or business establishment in the territory of the ROC shall appoint an agent to apply for trademark registration and other procedures.

Having a domicile in ROC and having one of the following qualifications can perform trademark agency business:

(1) Professionals who are legally authorized to perform trademark agency services.

(2) Professionals with the ability to apply for trademark registration and other affairs relevant to procedures.

The professionals in the second paragraph clause (2) shall be registered by the trademark agency before they can act as trademark agents to perform trademark agency services; after registration, they shall complete more than six hours of professional training each year.

The regulations for the registration of trademark agents, professional competence certification, professional training, management measures, cancellation, suspension of practice, cancellation or abolition of registration and other related matters shall be prescribed by the competent authority.

Replacement of “related affairs” with “other procedures”

This amendment clarifies a common misunderstanding created by the current wording that applying “for trademark registration and related affairs” implies that the scope of a trademark representation appointment is limited to the application for trademark registration, which excludes other common trademark registration procedures (eg, movement, objection, assessment and abolition). The proposal aims to solve this problem by changing the wording to “other procedures”.

The dissenting view is that the procedures for opposition, assessment, annulment and/or trademark administrative litigation should not be performed by trademark agents due to their technical complexity.

Addition of second and third paragraphs to Article 6

The addition of a second and third paragraph to Article 6, which contain new requirements to be a trademark agent, aims to ensure the quality of appointed trademark agents to handle trademark-related matters. While it is convenient and cost-efficient to appoint an agent, many trademark procedures demand a high degree of knowledge and experience. This is especially true of disputes where both parties must be familiar with not only the practical operation of trademarks but also the relevant legislation.

The amendments in the second paragraph provide the following two independent conditions to become a trademark agent:

• Clause (1) addresses professionals who are legally authorised to perform trademark agency services. It regulates lawyers and/or accountants who have expressly been permitted to engage in trademark agency business in accordance with by-laws.
• Clause (2) pertains to professionals with the ability to apply for trademark registration and other affairs relevant to trademark procedures. It regulates registered trademark agents and presents a transitional clause to require these professionals to demonstrate relevant professional knowledge of the trademark system and five years of continuous proven experience.

Additional management measures to trademark agents

Registration, certification, training, management measures, cancellation, halting, revocation and cancellation of a registration, among other things, are administrated by the competent authority.

Finally, the proposed modifications to Article 12 add an obligation to the competent authority to publish the trademark agent directory and the register of trademark agents to conform with amendments suggested in Article 6.

Comment

TIPO’s proposal focuses solely on the requirement to be – and management of – trademark agents, particularly with regard to introducing a minimum standard of professional knowledge and ethics, which should thus improve the effectiveness of the Taiwan trademark system.

In sum, ensuring the quality of trademark agents should benefit both brand owners and the general public. Further, the proposed draft should improve protection for foreign applicants with no knowledge of the Taiwan trademark system. These amendments also reflect the aims of specialised trademark law firms when it comes to service quality.