Taiwan promulgates new, broader trademark law

The Taiwan presidential office has promulgated amendments to the Trademark Law that will take effect on November 28. The substantial changes will afford protection to a wider range of marks, as well as affect, among other things, opposition, invalidation and cancellation procedures, and infringement provisions.

The changes to registration include the following:

• Protection will be extended to (i) three-dimensional, sound and single-colour trademarks, and geographical indications in respect of alcoholic drinks, and (ii) collective marks used to distinguish the goods or services of organizations that are part of a collective mark scheme.
  
  
• It will be possible for a single application to cover multiple classes of goods and services. Consequently, applicants will be able to split pending applications into several applications based on the various designated goods and services, and maintain the original filing date. Mark owners will be able to divide an existing registration in the same way.
  
  
• Mark owners will be able to renew a registration simply by paying the fee, as the substantial examination of renewal applications (eg, proof of use) will be abolished.
  
  
• The system of associated and defensive trademark registrations will be abolished. Existing associated registrations will become independent, whereas defensive registrations will remain as is until they expire. They will then become either independent registrations or be extinguished.

The amendments to the opposition, invalidation and cancellation procedures include the following:

• Opposition will be possible up to three months after the publication of the registration, whereas invalidation, except against plagiarism of well-known trademarks, will be possible within up to five years after the publication of the registration.
  
  
• It will be possible to cancel a trademark if (i) it has become a generic term for the registered goods or services, or (ii) its use misleads the public as to the nature, quality or origin of the goods or services.
  
  
• The use of a mark through electronic or digital media may satisfy the use requirement in cancellation actions for non-use.
  
  
• Market survey reports will be allowed as supporting evidence in opposition, invalidation and cancellation proceedings.

The changes to the infringement provisions include the following:

• The concept of trademark dilution will be introduced to protect well-known marks.
  
  
• The use of another party's registered trademark as a corporate, trade or domain name, or other symbol indicating the source of business will amount to infringement.
  
  
• In cases where the marks and/or goods or services at issue are merely similar, the plaintiff will have to prove that there is a likelihood of confusion among relevant consumers to obtain a finding of infringement.
  
  
• Trademark owners will be able to apply to the Customs Office for preliminary attachment against imported or exported goods suspected of infringing their marks.

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