THE NEW TRADEMARK ACT IS ABOUT TO TAKE EFFECT

07/01/2011

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On 31 May 2011, the Legislative Yuan passed after a third reading the Amendment to the Trademark Act, which includes 111 articles based on the 94 articles of the current Trademark Act. As four-fifths of the articles have been amended, this is the first significant revision after 2003. Because the Amendment involves may changes, the Intellectual Property Office (IPO) is planning to amend the corresponding measures, including the Enforcement Rules of the Trademark Act, examination criteria, application forms and computer systems. After all these measures are revised, the Executive Yuan will announce the date on which the Amendment will become effective. Currently, the Amendment is expected to take effect in July 2012.
The major amendments of the new Trademark Act are outlined as follows:
l	Specify the various modes of trademark use
	The modes of trademark use are specified with examples instead of defined by general provisions.
l	Expand the scope of protectable trademarks
	To comply with international trends, the Amendment specifies that any signs, which are distinctive enough to identify the source of goods or services, can be registered as trademarks. This extends protection to non-traditional trademarks such as "scent trademark," "motion trademark" and "hologram," which is the first expansion of scope since 2003 when non-traditional trademarks including single color trademark, three-dimensional trademark and sound trademark were included in the Trademark Act.
l	Priority rights based on Exhibition is available
	The Amendment prescribes that an applicant can apply for trademark registration with the claim of exhibition priority rights within six months after the applicant's goods or services bearing such trademark are displayed at an international exhibitions hosted or recognized by the government of the Republic of China.
l	Add new provisions regarding joint ownership of a trademark
	While applications for joint ownership are already accepted in practice, this is now clearly stipulated in the Trademark Act.
l	Amend disclaimer provisions
	If a trademark contains a non-distinctive por-tion, such as generic term or non-distinctive descriptive word, and if such portion is so obvious that no third party is likely to question the scope of the trademark rights, the IPO will no longer ask the applicant to disclaim such portion.
l	Specify the time for the applicant/registrant to restrict the goods or services, apply for division and make a disclaimer
	Under the current Trademark Act, the applicant/registrant can wait until the period of administrative remedies to restrict the designated goods or services, apply for division and make a disclaimer. Considering that repeated examination is a waste of administrative resources, the Amendment stipulates that such applications shall be filed before a trademark application is disapproved or a trademark dispute case is decided.
l	Add new provisions regarding reinstatement of rights when the deadline for paying the registration fee is missed and abolish the two-installment payment system
	Under the Amendment, if an applicant inadvertently delays in payment of registration fee, such payment can be made within six months after expiration of the period (but the registration fee shall be doubled), provided that no third party's rights are affected. Besides, the registration fee must now be paid in a lump sum.
l	Add new provisions regarding exclusive and non-exclusive license
	To comply with the different types of license contracts in practice, licensing is classified into exclusive license and non-exclusive license. The Amendment prescribes that unless otherwise provided for by the contract, in case of trademark infringement, the exclusive licensee can exercise the right to seek civil and criminal remedies in his/her name to the extent of the exclusive license.
l	Proof of trademark use is required for some types of disputed cases
	When an invalidation or revocation action is filed on the basis of an earlier trademark filed/registered on the same or similar goods/services, if the based trademark has been registered for three years or more, the applicant shall provide evidence of use, or non-use with good cause, of such trademark within three years to support its invalidation or revocation action.
l	Amend provisions regarding acts regarded as infringement of trademark rights
	1.	An act is regarded as trademark infringement as long as it can be proved that there is likelihood of dilution of the distinctiveness or reputation of a well-known registered trademark, so the applicant does not have to wait until actual damage is occurred. This is to afford better protection for well-known trademarks.
	2.	Any person who manufactures, possesses, exhibits, sells, exports or imports labels, hang tags, and packaging containers that have not been joined to the goods or services or articles in relation to services, knowing that such act likely infringes trademark rights, is deemed to have committed trademark infringement.
l	New provisions regarding border control measures
	1.	Add new provisions regarding border control measures by ex-officio detention of infringing goods and provision of information about infringing goods
		Under the Amendment, the customs authority can ex officio detain goods, and without prejudice to the protection of the confidentiality of the detained goods, the trademark right holder can obtain, under the approval from the customs, the relevant information regarding the names and addresses of the importer/exporter and recipient/shipper and the number of suspected infringing goods.
	2.	Add new provisions regarding the trademark right holder's request for samples of detained goods from customs to confirm infringement
		As it is difficult in practice to confirm infringement with respect to some counterfeit goods, the Amendment includes new provisions to permit the trademark right holder to ask for samples of the detained goods from customs to confirm infringement by providing a bond.
Among all the provisions of the Amendment mentioned above, particularly noteworthy are the provisions that when an applicant files an invalidation or revocation action on the basis of an earlier trademark filed/registered on the same or similar goods/services, if the based trademark has been registered for three years or more, evidence of use of such trademark in Taiwan must be submitted. As such provisions will make trademark protection difficult, trademark right holders should review the use status of their trademarks in Taiwan as soon as possible and reconsider their trademark protection strategy.