The draft amendment to TM Act was submitted to the Executive Yuan’s review on October 27, 2020

The draft amendment to Trademark Act was submitted to the Executive Yuan’s review on October 27, 2020.  Key points of the draft amendment are as follows: 

1. Introducing the accelerated examination mechanism for the trademark application. 

2. The scope of trademark rights with respect to the functional part of a trademark is clearly defined.

A trademark shall not be registered in any of the following:

the functional part of the mark is not presented in broken lines;

the aforesaid part could not be presented in broken lines, nor does it make a disclaimer to it.

3. Giving a clear definition to “Nominative Fair Use”.

A registered trademark shall not entitle the owner to prohibit a third party from using the trademark to indicate the source of its goods or services for the bona fide purpose of commerce.

4. Giving a clear definition to Trademark Act Article 30.1(15).

For an opposition filed based on the reason that a trademark registration infringes upon the prior rights of others as defined by Article 30.1(15), the judging standard to the final judgment of the court should be aligned with the time when the opposition is filed. The same rule applies to the invalidation procedure, and it is not restricted by the preclusive period.

5. Giving a clear definition on to affirm an opposition:

(1) where no administrative remedy proceedings are filed in accordance with laws; or

(2) where administrative remedy proceedings are filed but dismissed finally and bindingly.

If a trademark registration is cancelled finally and bindingly due to the opposition decision, the effect of trademark right shall not exist ab initio.

6.  Amending the qualification for filing invalidations.

Anyone is entitled to file an invalidation petition against a trademark registration on the grounds of its violation of Trademark Act. 

7. Where the interested party possesses recoverable legal interests due to the trademark removal, such interested party may file an invalidation action after the said trademark has become extinguished ipso facto.

8. Relaxation the procedure for revocation. The evidence for revocation is not required to be submitted.

9. Once the Revocation decision is affirmed, the exclusiveness of trademark rights shall lose effect from the next day of the revocation filed by request or ex officio.