1. Trademark Accelerated Examination Program (Draft)

 

  The Trademark Act—partially amended in May 2023—has now introduced a fast-track examination mechanism. It was instituted to expedite the examination of trademark applications where the applicant deems it appropriate—due to a business plan, for example—in order to obtain registration in a timely manner. In order to comply with statutory laws, in January 2024, the Taiwan IP Office released a draft for the Trademark Accelerated Examination Program. The types of cases eligible for acceleration, the necessary procedures and steps for an accelerated examination, and the time required after entering an acceleration pipeline are all specifically characterized.

 

  Notably, cases of trademark opposition, invalidation and cancellation are not subject to acceleration. Applications for registrations of certification marks, collective marks and collective trademarks are also not eligible for the program since they demand special examination procedures. However, applications for registering non-traditional trademarks for—among others—three-dimensional shapes, colors, scents, sounds and motions are eligible.

 

  Eligibility Criteria

 

  Generally speaking, there are two types of eligible applications.

 

  Type 1: All designated goods or services which are in current use or in readiness for immediate use. In the latter case, extensive evidence of pre-launch preparations must be shown. This supporting evidence includes samples of goods or services bearing the trademark, copies of orders for printed flyers, copies of advertising contracts and business plan documents. If any designated goods or services are not yet in use or not ready to be used, the applicant shall remove those goods or services in order to accelerate the application.

 

  Type 2: Some of the designated goods or services are in current use or in readiness for immediate use, and there exists a compelling urgency and necessity to enforce a trademark right. Cases of urgency and necessity include those in which (1) a third party has without consent used or prepared to use the trademark pending registration; (2) the applicant receives an infringement warning notice regarding the use of the trademark; (3) licensing negotiations are ongoing; (4) a sales or distribution agreement is signed to debut the trademark on the market; (5) a tradeshow contract is signed to exhibit the trademark; and (6) others. Where the Type 2 clause is applicable, only the classes of the designated goods or services will be accelerated after other ineligible classes—if any—are removed or divided.

 

  Requirements

 

  The applicant is required to submit a request for acceleration before the issuance of the first Office action at the latest. In the supporting evidence submitted, the trademark in use must be identical to the one applied for registration. Additionally, the designated goods or services must be the same or substantially the same in the view of general social concepts or trading practices.

 

  Procedures

 

  Once the office fee has been paid in full, the TIPO will enter an application for acceleration (See Fig.1 below). Applicants will not receive a separate notification but will be able to see on TIPO’s database that the application is subject to an “accelerated examination.” If, within approximately 10 days from the date of request, the TIPO deems that the necessary supporting evidence is insufficient, the applicant will be asked to supplement the documents as appropriate. Upon acceptance for acceleration, the TIPO will issue the first Office action or approval notice within two (2) months. Subsequently, after submission of amendments and/or arguments in response to the Office action, the TIPO will conclude the examination by issuing a decision within 15 working days. After the request is made and until the issuance of the first Office action, the applicant is permitted to change the grounds for the previous acceleration request—for example, from Type 1 to Type 2 or vice versa.

 

  As the TIPO emphasized, it may not be able to maintain the desired speed of acceleration in any one of the following circumstances: (1) the designated goods or services are too generic or abstract as to sufficiently correspond to those actually in use; (2) the application involves a non-traditional trademark with a three-dimensional shape, color, scent, sound, or continuous pattern; and (3) the examination of a trademark application is contingent on the decision of a contentious case.

 

  

 

  Fig. 1: Diagram for the Trademark Accelerated Examination Program

 

  2. Amendment to the Implementation Rules for the Trademark Act (Draft)[1]

 

  The TIPO plans to modify part of the Implementation Rules for the Trademark Act (“IR”) in accordance with the revision of the Trademark Act. Most of the revisions involve fine-tuning of formalities or operating regulations. Key points are summarized below.

 

  (1) It is emphasized in the new IR that a trademark applicant who intends to engage in the business of the designated goods or services must have a genuine intention to use. Where necessary, the TIPO may request the applicant to provide further supporting evidence.

 

  (2) In response to the upcoming establishment of the trademark attorney as a new practice license, the new IR clarifies in all related articles that a person representing a trademark application is an “agent”, which may refer to a trademark attorney, an attorney-at-law or a certified public accountant, among others.

 

  (3) In order to strengthen privacy protection, when a trademark holder is a natural person, some of the residential information on the register can now be concealed.

 

  (4) In response to the introduction of the “Trademark Accelerated Examination Program,” eligibility and requirements are further stipulated in detail in the new IR.

 

  (5) The new IR requires employing the dotted lines to illustrate the manner, location, functional part or content of the trademark on the designated goods or services. The area defined by the dotted line is not part of the trademark.

 

  (6) For third-party observation submissions, the new IR requires that the TIPO shall not cite a rejection originating from a received submission before forwarding the same to the applicant. Furthermore, after receiving a submission, the TIPO has no obligation to notify the submitting party of how it processes the case in response to the submission.

 

  3. Amendment to the Standards of Trademark Fees (Draft)[2]

 

  In accordance with the user pays principle that compensates for the cost of special public services, the TIPO plans to amend the Standards of Trademark Fees to provide a legal basis for trademark accelerated examination requests as well as requests for registrations of licensed trademark attorneys.