Jane H. C. Chen
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To cope with the enforcement of the New Trademark Act that became effective on 1 July 2012, the Intellectual Property Office ("IPO") has amended the Enforcement Rules of the Trademark Act, which simultaneously took effect as of 1 July 2012.
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The major amendments of the Enforcement Rules of the Trademark Act are outlined as follows:
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1.
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Add new provisions specifying that when filing a trademark application, the IPO may order the applicant to provide a description of the trademark and trademark sample(s), if necessary
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2.
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Specify definitions of non-conventional trademarks in the form of color, three-dimension, motion, hologram or sound and provisions regarding trademark drawings, descriptions and samples thereof
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The draft Enforcement Rules of the Trademark Act specifies that when filing a three-dimensional trademark or motion trademark application, a maximum of six drawings of the trademark may be submitted, and when filing a hologram trademark, a maximum of four drawings of the trademark may be submitted. Therefore, an applicant shall cautiously select drawings that best depict the distinctive features of the concerned trademark.
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3.
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Specify the calculation method for the 6-month priority term
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The 6-month priority term is calculated from the date after the date of filing of the first application in any country or a member country of the World Trade Organization that has formed mutual recognition of priority rights with the Republic of China (Taiwan), or from the date after the date when relevant goods or services have been displayed at an exhibition.
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4.
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List acceptable changes that do not substantially alter trademark drawing
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Specify situations in which changes to the drawing of a trademark are allowed; for instance, the portion not included in a trademark should be depicted in dotted lines.
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5.
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Specify circumstances where even if consent from the owner of an earlier trademark is obtained, since the later-filed trademark application is obviously improper, it cannot be granted registration
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The said circumstances include:
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a) |
The to-be-filed trademark is identical to a registered trademark or an earlier filed trademark and is designated for use on the same goods or services.
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b) |
The registered trademark receives an injunction from a court.
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c) |
Other circumstances where registration is obviously improper (according to the IPO's substantial review of solid facts and evidence at the time of examination on a case by case basis).
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6.
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Specify provisions governing the period in which an applicant may voice his/her reasons before the IPO renders a trademark rejection, and extension of such period
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A local applicant is given one month to put forth his/her reasons, while a foreign applicant is given two months. The period may be extended for an additional term and thereafter no extension would be granted without any good cause.
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7.
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Add provisions specifying that an application for recordation of trademark license should indicate whether such license is exclusive or non-exclusive, and delete provisions specifying that the recorded term of license is limited to the term of relevant trademark rights
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The term of license agreed in a license contract may exceed the registered term of relevant trademark rights. However, considering that trademark rights are renewable by law after their expiration, the effect of the original license contracts should not be affected and therefore no additional application for recordation of such license is required.
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8.
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Delete provisions specifying that recordation of a pledge should indicate the term of pledge and that the term of pledge is restricted by the term of relevant trademark rights
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The term of existence of a pledge depends on the clearance of relevant collateralized debt. Once a trademark registration is renewed, no additional application for recordation of a pledge thereon is required.
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