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26 August 2003
Definition of 'Trademark'
Increased Protection for Famous Marks
Statutory Time Bars for Invalidation Actions
Causes of Action for Revocation
Applicability to Opposition, Invalidation and Revocation Actions
Trademark Registration Application Filings
Defensive and Associated Marks
Impounding of Infringing Goods
Certification and Collective Marks
Renewal of Trademarks
On April 29 2003 the Legislative Yuan enacted an amendment to the Trademark Law in order to bring Taiwan's trademark regime more closely into line with current international standards. The amendment becomes effective on November 28 2003. It is expected that new enforcement rules will be promulgated by the competent authority (the Ministry of Economic Affairs) on the effective date of the amendment.
This update examines the key changes introduced by the amendment.
While the existing law distinguishes between trademarks and service marks, and has separate provisions governing each, the amended law incorporates service marks within the definition of 'trademark', thus ensuring greater uniformity of treatment between the two.
Under the existing law, trademark protection is only available for two-dimensional printed visual representations of words, symbols or combinations of colours, or combinations thereof. Under the amended law, the scope of registrable trademarks is broadened to include any sound, (single) colour or three-dimensional shape. In order to be registrable, marks may be used under the amended law not only in two-dimensional graphic form, but also in digital audio/visual form or by way of electronic media (or any other medium that allows consumers to recognize the mark as distinguishing the goods or service in question).
At present, a mark may not be registered if it is the same as or similar to a famous domestic or foreign mark, where registration is likely to cause consumer confusion. Under the amended law, it is no longer necessary to show a likelihood of consumer confusion in order successfully to oppose or invalidate registration of a mark that conflicts with a famous mark. Rather, it is sufficient to show that the distinctiveness or reputation of the famous mark will be diluted by registration of the conflicting mark (although it may still be demonstrated in the alternative that consumer confusion is likely).
Further, under the amended law the owner of a famous mark may now bring civil suit against persons who knowingly use a mark which is the same as or similar to the famous mark, and who thus dilute the distinctiveness or reputation of the famous mark.
The amended law describes in much greater detail than its predecessor the rules governing opposition actions, which may be filed within three months of the date of publication of a trademark registration. The changes include a new stipulation that market surveys may be admitted in opposition actions, together with the rules for so doing.
The existing law contains a shortlist of causes of action for invalidation which are time barred if not made within two years of publication of registration. Only one of the 14 stipulated non-registrable conditions is currently subject to the two-year invalidation action time bar.
Under the amended law, eight of these conditions have been made subject to the time bar, including conflict with a famous mark. However, the limitation period has been lengthened from two to five years before any such right of action is subject to the time bar. An exception is incorporated in the amended law for invalidation actions brought on the basis of conflict with a famous mark, with the effect that in the case of bad-faith use of a mark identical or similar to a famous mark, the time bar under the amended law will not apply.
In contrast to opposition or invalidation applications, applications for revocation of a trademark are not subject to any time bar under the law.
Under the existing law, upon occurrence of any of the following a registered trademark may be revoked ex officio or by application of an interested party:
Under the amended law, the first, second and fourth points above remain the same. The third point has been removed, and in its place the following new items have been added as conditions for revocation of a mark:
As regards opposition and invalidation actions, pursuant to the amended law the law governing whether marks registered prior to the effective date of the amendment are illegal is the law in effect at the time of registration of the marks. However, the procedural rules stipulated in the amended law shall apply to such actions filed or in continuance after the effective date of the amendment.
Certain of the application review procedures that are not stipulated in the existing law, but instead are included in the current enforcement rules, have been incorporated into the amended law. Further, a number of provisions granting discretionary authority to the Ministry of Economic Affairs have been eliminated in the amended law (eg, Article 20, which permits the ministry as it deems necessary to keep confidential official records pertaining to trademarks).
The amended law provides that applications may be filed electronically (upon the promulgation of rules pertaining to such filing by the ministry), and that the official Trademark Register may be kept in electronic form.
Under the existing law, application fees are to be paid at the time of filing the application. Under the amended law, the fees become payable only once approval is granted.
Further, under the amended law a single application may cover use of a mark in multiple classes; under the current law, in contrast, a separate application must be filed for each class.
The amended law abolishes associated marks and any such that have been registered are to be considered as independent trademarks. Pursuant to the amendment, no new defensive marks may be registered and existing registered defensive marks may only be renewed, if at all, as an independent trademark.
Prior to the effective date of the amendment, an action for impounding a shipment of goods which violate trademark rights must be brought under the Foreign Trade Law, since there are no provisions governing such in the current law. The Foreign Trade Law provisions are vague and grant the Ministry of Economic Affairs a great deal of discretionary authority.
Under the amended law, a trademark owner may demand as a matter of right that goods be impounded by the customs authorities. Detailed provisions are set out on this procedure, including (i) the mandatory payment of a bond by the claimant in the amount of the assessed duty-paid price of the goods or the free-on-board price, and (ii) the right of the party whose goods are detained to post a counter-bond in an amount of twice that posted by the claimant.
Certification marks may now be filed to cover place of origin of a product. Under the amended law, the owner of a certification mark is prohibited from engaging in any business related to the goods or services to be certified. This prohibition is not included in the existing law.
At present, collective marks may only cover membership of an organization. Under the amended law, collective marks may be registered to identify not only membership of an organization, but also the goods or services it provides.
Once the amendment takes effect, there will be no further substantive review of renewal applications and renewals will be granted as a matter of course.
For further information on this topic please contact Arthur Shay or William Edwards at Shay & Partners by telephone (+886 2 8773 3600) or by fax (+886 2 8773 3611) or by email (firstname.lastname@example.org or email@example.com).
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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