TRADEMARK LAW AMEND-MENTS ENACTED

05/01/2003

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After more than four years of waiting, amend-ments to the Trademark Law received their third and final reading in the Legislative Yuan on 29 April 2003. The amended law was promulgated by the President on 28 May 2003, and will take effect on 28 November 2003.

The law has been extensively overhauled in re-sponse to the needs of domestic enterprises and international legislative trends. 50 existing arti-cles were amended, 40 new articles added, and 23 articles repealed, expanding the law from 79 articles in seven chapters to 94 articles in ten chapters. The main points of the amendments are briefly introduced below:

Ÿ The definition of a trademark is broadened to include marks that distinguish goods and ser-vices.

Ÿ Relaxed provisions:

1. An applicant needs no longer to submit a product catalogue or affidavit as evidence of use or evidence of intention to use the mark.

2. Relaxed procedure for claiming priority: At the time of filing, an applicant needs only to state on the application form the filing date of the basic application and the country accepting the basic application. The serial number of the basic application can be submitted later.

Ÿ Protection is extended to sound trademarks, three-dimensional trademarks, and sin-gle-color trademarks.

Ÿ The definition of trademark use is amended to accommodate the needs of e-commerce and the Internet.

Ÿ Protection of famous marks is expanded to protect them against actions that dilute their distinctiveness or improperly exploit their commercial reputation.

Ÿ Protection is introduced for the use of collec-tive marks to distinguish goods or services supplied by organization members.

Ÿ Protection is introduced for place of origin marks.

Ÿ Applications may designate multiple classes of goods.

Ÿ Rights to use a pending or registered trade-mark on different designated goods or services may be individually assigned to multiple as-signees. However, if assignments of a trade-mark lead to identical or similar marks being used on similar goods by multiple suppliers, appropriate distinguishing symbols must be appended to distinguish between the different sources of goods or services, and that failure to append such distinguishing marks is grounds for revocation of the trademark registration.

Ÿ It is explicitly provided that a coexistence agreement can overcome the citation objection. But if the marks and goods/services desig-nated by the two applicants are identical, reg-istration will still not be granted to the later-filed application even if a coexistence agreement is submitted.

Ÿ The systems of associated trademarks are abolished and defensive marks will be phased out.

Ÿ Provisions are introduced concerning the payment of registration fees and their install-ment payment.

Ÿ A post-registration opposition system is adopted. In other words, after a registration is published on approval and the payment of the first installment of registration fees, any per-son who believes that the registration is unlawful may file an opposition within three months following the publication date.

The extent of trademark exclusivity is made explicit.

A trademark registration becomes incontest-able after five years from the publication date, except on certain grounds.

A trademark having become the common name for a product or service, improper use of a trademark such that the public is likely to be misled as to the nature, quality or place of origin of a good or service, and use that in-fringes on another person's copyright, patent rights or other rights, all constitute grounds for revocation of a trademark registration.

It is explicitly provided that using a trademark registered by another as a company name, trademark name, or Internet domain name is to be regarded as infringement of trademark rights.