To make sure the Trademark Act fits the country’s practice needs, starting from 2018, TIPO has been drafting amendments to the Act. Two consultation meetings, one attended by invited experts and scholars and the other on trademark examination quality, as well as a public hearing on the draft amendments to the Trademark Act, were held. Upon analyzing the suggestions provided by all circles of society on the public hearing on October 15, 2019, TIPO proposed the draft amendments to the Trademark Act (find the general description of the draft and a comparison table for the articles of the act before and after revision as attached.)
In this latest draft, a total of 14 articles were amended and two new articles were added. The main points are as follows:
Paragraph 2 of Article 6 specifies that the qualifications of trademark agents other than attorneys or agents who have been licensed to practice matters related to the trademark in question. Paragraph 3 of the same article sets the rules for registration requirements, as well as the managerial measures to be adopted by competent authorities, for trademark agents.
The accelerated examination mechanism for trademark application will only be applicable to “cases of application for trademark registration” in the future. The contents amended in Paragraph 2, Article 14 of Chapter I (General Provisions) will be listed in Paragraph 8, Article 19 of Section I, Chapter II (Application for Registration) instead, and serve as the reference for setting a fee-charging standard for accelerated examination in Article 104, also amended. Specific guidelines will be in place soon for the public in line with the accelerated examination program of the invention patent application.
Conditions such as “where a final judgment of the court has been rendered” in Sub-paragraph 15, Paragraph 1, Article 30 were to be deleted at first. However, many attendants of the public hearing noted that deleting such content may lead to more disputes. Since it has been difficult for TIPO to verify the conditions when examining a trademark application case, drawing references from Paragraph 2, Article 60 of the EU Trade Mark Regulation, we decided to move the content regarding the provision of reasons for approving/disapproving an application request in the sub-paragraph to Paragraph 2, Article 57 in the amended Trademark Act, as the grounds of invalidation filed by an interested party. After the parties have provided their reasons, TIPO will determine whether to perform the invalidation or not. Such is unbound by the five-year peremption period.
Section IV, Chapter II (Opposition) was to be removed from the Trademark Act, and a consensus was reached among members of society at public hearings. However, as we are planing to amend the adversary system for trademark disputes, considering that it is better to make comprehensive structural changes instead of partial amendments, the section is retained for now. In the future, amendments on the adversary system will be made in a setting in which legal stability is prioritized.
For more information (in Mandarin), please visit:
A comparison table for the before and after revision articles of the Trademark Act
General explanation on the amendments to the Trademark Act