The Intellectual Property Office published and validated “Principles of Procedural Examination of Trademark Dispute Cases” on Oct-30, 2017. The key points thereof are stated below.
A. Declaration and Acceptance Regulations
If the right of a trademark is transferred during the procedures of opposition or invalidation of the trademark, the transferee should declare that she/he accepts
1. If the transferee has declared to accept the declaration and acceptance regulations, the transferee of the disputing trademark is the object of the succeeding dispute examination procedures.
2. If the transferee did not declare to accept the declaration and acceptance regulations, the original applicant of the disputing trademark is still the object of the succeeding dispute examination procedures.
B. Treatments for Dissolution, Revocation or Abolishment of the Company
1. While the applicant of trademark revocation finds that the dissolution, revocation or abolishment of the company of the owner of the disputing trademark is published in the website of Department of Commerce, MOEA, or that the company of the owner of the disputing trademark has been dissolved, revoked or abolished and has been cleared off for more than 3 years, the examiner should transmit the corresponding evidence to the owner of the disputing trademark and allow the owner to make a plea.
2. If the company of the owner of the disputing trademark has not yet been dissolved, revoked or abolished for more than 3 years, the examiner should inform the applicant of trademark revocation of providing the corresponding inquiry/investigation reports.
C. Notification and Time Limit of Correction and Supplement of Data
While the applicant files a dispute case, the applicant should state facts and reasons clearly in the application form and attach related evidence and data to the application form. If the applicant is informed to correct the data or supply more data by a time limit, the applicant is not allowed to ask for postponing the examination only using a reason that negotiation is being undertaken without concrete facts.
D. Control of Examination Schedule
If the corresponding party uses a reason to ask for postponing the time limit of making pleas or stating opinions, the examiner should allow the time limit to be postponed for one month. If the corresponding party asks for postponing the time limit once again, the time limit is not allowed to be postponed any more in principle. However, if the corresponding party has an appropriate reason, the time limit may be postponed for one month once again.
E. Reasons for Suspending Examination
1. The disputing trademark or the trademark, which a dispute case is based on, is involved in another trademark dispute case.
2. The disputing trademark is involved in several related or similar trademark dispute cases. One or more of the cases have been disposed, and the corresponding party has made an appeal or brought an administrative suit.
3. The corresponding party applies for postponing, transferring or assigning the disputing trademark or the trademark, which a dispute case is based on, in another case.
4. The scope of the disputing trademark or the trademark, which a dispute case is based on, is being divided or reduced in another case.
5. The administrative litigation for the revocation of the original disposition is being undertaken.
6. The registration of the disputing trademark should be abolished because the disputing trademark was not in use for 3 years from the beginning, or the application of the disputing trademark had been stopped for 3 years continuously.
(1) While the examination is asked for suspension because two parties are negotiating, the owner of the disputing mark still should provide evidence to prove that the disputing trademark is still being used.
(2) The examination suspension resulting from the abovementioned non-usage or interrupted usage of the disputing trademark is only allowed to be postponed for 3 months in principle. If the corresponding party asks for postponing examination once again using an appropriate reason, the examination can be further postponed one time. No postponing is allowed any more.
According to Article 109 of Administrative Procedure Law, the corresponding party needn’t undertake any petition procedure but may directly file an administrative litigation against the disposition made in the hearing for a trademark dispute case.
G. Precautions in the Examination Procedure of a Trademark Dispute Case
1. The applicant should state the facts and reasons clearly in the application form. If the data is unclear or incomplete, the applicant would be informed to correct the data or supply additional data by a time limit. In such a case, the time limit is not allowed to be postponed in principle. If the reason for postponing the time limit is deemed to be appropriate by the examiner, the time limit is allowed to be postponed for one month.
2. The time limit of making a disposition
The administrative disposition of a trademark revocation case or a trademark opposition case should be made within 2 months, and the administrative disposition of a trademark invalidation should be made within 3 months, unless there is an appropriate reason for postponing the administrative disposition.
H. Operational Procedures on Hearings for Trademark Dispute Cases
1. Conditions for holding a hearing
The corresponding party of a trademark dispute case may ask for a hearing using an application form with reasons stated thereinside. The Intellectual Property Office may also hold a hearing in the administrative powers thereof.
2. Reason for not holding a hearing
If the examination deems that a hearing is unnecessary, the disposition notification should state the reason for not holding a hearing clearly.
3. During the hearing procedure, the applicant may withdraw or abandon a portion of assertions or reduce the asserted scope of the merchandise or service. The owner of the trademark may agree to reduce the scope of the merchandise or service, which is specified by the registered trademark, abandon the ownership of the trademark, or divide the right of the trademark.