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Following the minor amendment to the Trademark Law in 1997, a major revision of the law is now envisaged in line with the trend towards global harmonization of the trademark system, and the developing needs of trade and industry. The Intellectual Property Office (IPO) has finished drafting amendments which would expand the law from its present 79 articles in seven chapters to 103 articles in nine chapters. The main contents of the proposed changes are summarized as follows:
The definition of trademarks is to be expanded to cover symbols which distinguish goods and services.
Protection for three-dimensional trademarks is to be introduced.
The definition of use of a trademark is to be amended to accommodate the needs of electronic commerce and the development of the Internet.
Protection of well-known trademarks is to be expanded to cover practices liable to weaken their distinctive character or to be detrimental to or to take unfair advantage of their repute.
A system of single application for multiple classes is to be adopted.
Associated trademarks are to be abolished, and defensive trademarks phased out.
A single trademark application may be divided into two or more applications, or separately assigned to multiple persons; the right to exclusive use of a registered trademark in respect of individual products or services may also be separately assigned.
The time limit for opposing to an approved and published trademark application is to be reduced to two months.
Trademark registration fees are to be paid in two stages, in the first and fourth years.
Use of the trademark will no longer be examined on application for renewal.
Assignment of exclusive rights in a trademark will not affect the continuation of pre-existing licensing arrangements.
A licensee's failure to indicate that a trademark is being used under license, as required by law, is to be grounds for termination of the license.
Rights in a trademark may not be pledged to a third party without the agreement of an existing pledgee.
The proprietor of a trademark may renounce his or her rights to its exclusive use in respect of some or all of the goods or services for which it is registered, except that if a license or pledge is recorded, the agreement of the licensee or pledgee is required.
Rights in a trademark will become incontestable five years after the date of publication of its registration, except under certain legally defined circumstances.
For cases concerning invalidation of a trademark registration, verbal debate should be held if it is applied for by the parties or intervener concerned or deemed necessary by the trademark authority.
A party who is dissatisfied with the outcome of an invalidation of a trademark registration may seek judicial recourse by bringing an action in the Administrative Court.
Re-trial may be applied for under certain legally defined circumstances for cases concerning invalidation of a trademark registration.
A Trademark Examination Commission is to be established to independently hear cases concerning invalidation of a trademark registration.
Each of the following will constitute grounds for revoking exclusive rights in a trademark: a trademark becoming the common name for goods or services; improper use tending to mislead the public as to the nature, quality or geographical origin of goods or services; and infringement of another's copyright, design patent rights or other rights.
Falsely representing a mark as a registered trademark will trigger criminal penalties.
Protection is to be extended to marks of geographical origin markings.
Collective marks which distinguish goods or services supplied by members of an association will be registerable.
Improper use of certification marks, association membership marks or collective marks will be made explicit grounds for revocation.
The draft amendments still have to be presented to the Executive Yuan and then the Legislative Yuan for scrutiny, and may undergo changes. Their formal entry into force and implementation can be expected in one to two years. We will continue to watch developments closely and keep our readers informed.
