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BASIS FOR TRADEMARK OP-POSITION NOT AMENDABLE OUTSIDE OPPOSITION PERIOD
Article 46 of the old Trademark Act provided that a person who believed that a decision to grant registration of a trademark did not comply with the provisions of the Act could file an op-position with the trademarks authority, within the publication period. Article 41 Paragraph 1 of the old Act defined the publication period as three months from the date of publication. (In the amended Trademark Act, which took effect on 28 November 2003, Article 40 Paragraph 1 de-fines the grounds and time period for an opposi-tion.) Article 38 Paragraph 4 of the old En-forcement Rules of the Trademark Act also pro-vided that within the publication period, an op-position petitioner could amend the facts and grounds asserted in support of an opposition (equivalent to Article 34 Paragraph 3 of the amended Enforcement Rules, effective 12 De-cember 2003). But the Trademark Act makes no explicit provision as to whether a petitioner may amend the facts or grounds asserted in support of an opposition action, or the legislative provisions relied upon, after the publication period has ex-pired, and this has been a matter of dispute in practice.
In a 2003 judgment, the Taipei High Adminis-trative Court, citing a 2001 judgment and two 2002 judgments of the same court in similar cases, held that the three-month opposition period is an invariable statutory period, and ac-cordingly no additional facts or grounds for an opposition may be introduced after the period has expired.
However, it is worth noting that a 1988 judgment of the Administrative Court (reorganized as the Supreme Administrative Court on 1 July 2000) took a different view, stating that an opposition action filed against a trademark registration is lawful as long as it states the basic facts on which the opposition is based, and that it is not neces-sary for it to further cite the legislative provisions allegedly violated. In a trademark opposition, the trademarks authority, using the powers vested in it, should make its own determination as to whether the original decision to grant registration was unlawful, and as to which legislative provisions apply, within the scope compatible with the basic facts stated by the interested party; the authority is not limited by those legislative provisions cited by the interested party.
It can be inferred from the above opinion of the Supreme Administrative Court that it ought to be permissible to add to or alter the cited legislative provisions after the opposition period has ex-pired, as long as the newly cited provisions do not go beyond the scope of the basic facts al-leged.