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NO ADDITIONAL GROUNDS OUTSIDE OPPOSITION PERIOD
Under Article 46 of the old Trademark Act, as in force until 27 November 2003, any person who believed that a decision to allow registration of a trademark was in breach of the Act could file an opposition action with the IPO (Article 40 of the current Trademark Act contains similar provi-sions). Article 38 Paragraph 4 of the old Trademark Act Enforcement Rules further pro-vided that if the facts and grounds stated in an opposition petition were unclear or incomplete, the trademarks authority could instruct the op-position petitioner to amend them within a specified period, and that during the publication period the petitioner could amend or make addi-tions to the facts and grounds asserted for the opposition (Article 34 of the current Rules in-cludes the same provisions). An issue arose as to whether further facts and grounds may be added after the opposition period has expired. A 2001 judgment of the Supreme Administrative Court, and 2001 and 2002 judgments of the Taipei High Administrative Court, all expressed the view that this was not permissible.
However, it is worth noting that in a 1988 judgment the Supreme Administrative Court, taking into consideration the provisions of the Trademark Act as in force at the time, held that it was permissible, after the opposition period had expired, for an opposition petitioner to amend his statement of the provisions of the Trademark Act on which the opposition was based, if the petition as originally filed stated the basic facts underly-ing the opposition, but did not state the articles of the Act under which it was filed, nor the provi-sions allegedly breached. If the underlying facts asserted were identical, it was within the power of the trademarks authority to determine whether the original examination decision was in any way unlawful, and which provisions of the Act ap-plied to the case. In doing so it was not limited to those provisions cited by the opposition peti-tioner.
Whether this opinion of the Supreme Adminis-trative Court will influence the view taken in practice in future trademark opposition actions, or even in invalidation and revocation actions, remains to be clarified in individual cases.