Update on draft amendments to the Trademark Act to accelerate trademark examination procedures

For many years, the Taiwan Intellectual Property Office (“TIPO”) has aimed to optimize and reduce the length of trademark examination procedures. Ever since the e-filing system was introduced in 2008, the TIPO has been encouraging applicants to take full advantage of it. To realize this goal, the TIPO implemented the “Fast-Track Trademark Examination Program” (“Fast-Track Program”) in 2021.

Under this model, if an applicant registers a two-dimensional mark via the e-filing system and fulfills the necessary procedural requirements, they can shorten the examination process and receive their decision two months earlier compared to previous applications. Without requiring individuals to send in a separate application, this e-filing system scans for eligible applications and automatically puts them in the Fast-Track Program.

2 years after, the TIPO came up with an “Accelerated Examination Program” (“AEP”) to further satisfy the emerging needs of brand owners. By paying an additional fee and requesting for AEP with the required rationale at the TIPO, applicants can now speed up their application process through the new program.

On 20 April 2023, several draft amendments to the Trademark Act were discussed in the 7th session of the Legislative Yuan’s 10th legislature. In this meeting, the Economics Committee conducted a preliminary review of the draft amendments and completed the first stage of the examination procedures. What is worth noting is that if the third reading of the AEP is completed in the near future, “accelerated” applications will soon be eligible for a much shorter timeframe of examination. Instead of the 6.9 months that the TIPO requires on average, the duration of the examination period will be reduced to 2 months, satisfying applicants’ needs to speed up their examination process.

The Executive Yuan’s proposed amendment for the AEP provides the following:

In filing for trademark applications, when it is necessary for an applicant to acquire trademark rights in a timely manner, they are permitted to request the Registrar Office to conduct the AEP after providing them with the relevant rationale and fees. This provision does not apply to applications that have already received correction notices or rejection decisions by the Registrar Office.

As provided above, if an application has already received notice from the TIPO demanding correction or detailing the rejection decision, then they are not eligible for the AEP. Another crucial question is, when is it “necessary for an application to acquire trademark rights in a timely manner?” The Executive Yuan’s proposed amendment explains that when the goods connected with the trademark are “involved in infringement or litigation cases,” “to be displayed in exhibitions,” or “scheduled to enter the market,” etc., acquiring trademark rights in a timely manner is necessary.

The TIPO Director General points out that the requirements behind “necessity” and the applicant’s burden of proof will be elaborated on through more detailed regulations in the published legislation. On the other hand, the TIPO Director General states that they plan to charge a total of TWD6,000 in AEP-related fees.

However, applicants must pay special attention to the fact that certain trademark applications – including certification marks, collective membership marks, or collective trademarks – are not eligible for AEP, because the process of examining the required documents is more complex.

This is a translation of the original article in Chinese, which can be found here. Written by Gary Kuo, and May Lu. Translated by Emma Chiu.