Guidelines on amendments to Trademark Act issued

The Intellectual Property Office (IPO) has issued "Guidelines on Amendments to the Trademark Act". The guidelines are designed to help Taiwan better fulfil its obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and to render the law more relevant to the developing needs of modern trade and industry.

The guidelines cover the following issues:

• Registration:
  
  
  • Applicants can claim priority within six months from the date when the goods or services are exhibited at international exhibitions held or officially recognized by the Taiwanese government.
    
    
  • Any proposed mark that can be described by graphics or words is eligible for registration as a trademark. Many non-traditional marks such as scents and motion marks will therefore qualify for trademark protection.
    
    
  • An applicant that unintentionally fails to pay the registration fee within the statutory period, may request the reinstatement of the validity of the trademark no later than within one year after the end of the statutory period. Reinstatement is not available when it will affect the rights and interests of a third party who has acquired its rights in a bona fide manner.
    
    
  • The registration fees must be paid in one lump sum; accordingly, payment of the registration fees in two instalments is no longer available.
    
    
• Opposition, invalidation and cancellation:
  
  
  • Trademark protection cannot be granted to the national emblems and flags of any of the World Intellectual Property Organization's member nations, the emblems and signs of other nations, any official hallmarks for certification used by different nations or the emblems of intergovernmental organizations.
    
    
  • The protection of geographical indications in relation to alcoholic beverages is restricted to geographical indications for wines and spirits only.
    
    
  • In trademark dispute cases, the owner of the prior rights must prove use of its trademark if the mark has been registered for over three years; otherwise, the trademark cannot serve as the basis to overturn the registration of the mark at issue.
    
    
  • Under the prevailing structure, to contest the IPO's decisions, an administrative appeal can be filed with the Ministry of Economic Affairs (MOEA). Appeals from MOEA's decisions are heard as administrative suits by the Taipei High Administrative Court, with further appeal to the Supreme Administrative Court. However, to streamline the procedure, the IPO plans to set up a Review and Dispute Committee as the first instance of appellate proceedings. Appeals from committee decisions can be filed as administrative suits directly with the court.
    
    
  • The opposition system will be abolished.
    
    
• Licensing: A 'trademark licence' encompasses two distinct types of licence, namely an exclusive trademark licence and a non-exclusive trademark licence. The exclusive licensee may, within the scope of the licence, exercise its rights as the trademark owner, and may make any litigious claim in the name of the mark owner. The mark owner, within the scope of the licence, cannot exercise its rights unless otherwise contracted. The non-exclusive licensee may request the trademark owner to make any litigious claims in relation to any matters that will affect its interests. If the trademark owner refuses or fails to do so within two months of the request, the non-exclusive licensee may make the claims in its name.
  
  
• Infringement:
  
  
  • Nominative use, such as describing the contents or characteristics of one's own goods/services by mentioning third-party trademarks, is fair use and is a defence against claims of trademark infringement.
    
    
  • A claim to prevent or stop trademark infringement can be brought against another party, even where the infringer neither acted in bad faith nor was negligent. However, damages can be claimed only when the infringer has acted in bad faith or was negligent.
    
    
  • Examples of infringing actions as defined by the law include:
    
    
    • The use of the mark in connection with goods or the packaging or containers of goods;
      
      
    • Sale or rental of the goods bearing the mark, an offer to sell or rent such goods or possession of the goods bearing the mark with the intention of selling, renting or offering them for sale;
      
      
    • Provision of services under the mark; and
      
      
    • Exportation or importation of any goods bearing the mark, and the use of the mark on business documents or advertisements in connection with the goods or services.
      
      
  • The following actions are also deemed to be trademark infringement:
    
    
    • Without consent from the trademark owner, in the course of trade, applying a mark identical with or similar to the registered trademark on, among other things, labels, packaging, containers, business documents, advertisements in connection with the goods or services, and such materials are likely to be used with goods/services identical with or similar to those of the registered trademark;
      
      
    • Sale of the aforesaid materials, an offer to sell such materials or possession of such materials with the intention of selling or offering them for sale; and
      
      
    • Exportation or importation of the aforesaid materials.
      
      
  • Mark owners are no longer required to prove actual dilution when claiming trademark infringement based on the dilution of a registered well-known trademark. Trademark infringement can be found if the likelihood of trademark dilution exists.
    
    
  • Without the consent of the owner of an unregistered well-known mark, a party that uses in the course of trade a mark which is identical or similar to the unregistered well-known mark on goods or services identical or similar to those for which the unregistered mark is known so as to confuse relevant consumers, will be deemed to have infringed the unregistered well-known mark.

Kwan-Tao Li and Joseph S Yang, Lee and Li Attorneys at Law, Taipei