07.29.2021
The Taiwan Intellectual Property Office Announced the Second Version of the Draft Amendment to Certain Articles of the Trademark Act
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On January 7, 2021, the Taiwan Intellectual Property Office (TIPO) announced the first version of the draft amendment to certain articles of the Trademark Act and invited public comments. The TIPO received a total of 39 comments during 60 days after said draft was announced. After considering all the comments, the TIPO announced the second version of the draft amendment on July 1, 2021, in which nine articles are amended, 33 articles are added and 11 articles are deleted (53 articles are revised in total).
Compared with the version of January 7, 2021, the main changes of this version are as follows.
1. Amending provisions concerning inadmissibility of reexamination and contentious cases
A draft proviso is introduced in the relevant draft provision, stipulating that when a defect is deemed rectifiable, the TIPO shall notify the relevant party to amend the defect within a specified period of time before issuing a decision to dismiss a reexamination or contentious case.
2. Amending provisions concerning appointment of an advocate for appellate litigation of reexamination and contentious cases
A draft provision is introduced, stipulating that a person who is not an attorney-at-law may act as an advocate for appellate litigation of reexamination and contentious cases under certain conditions.
3. Deleting former draft provisions concerning court costs of appellate litigation of reexamination
The former draft provisions in question are deleted because the Judicial Yuan has the sole and exclusive authority to account and tax court costs. Instead, the relevant provisions of the Code of Civil Procedure shall apply mutatis mutandis.
4.Adding a basis for an intervener to initiate a lawsuit
To strengthen the function of dispute resolution in appellate litigation of trademark reexamination and contentious cases, draft provisions stipulating that an intervener in a reexamination or contentious case may initiate appellate litigation are introduced.
5. Adjusting conditions for presenting new evidence during appellate litigation of trademark contentious cases
Considering the aim to improving remedial efficiency in light of the peculiarity of trademark contentious cases, a draft proviso is added in the relevant draft provision to allow a party, or an intervener, involved in a contentious case to present new evidence on appeal under certain conditions.
6. Adjusting the applicability of transitional provisions
In terms of the repeal of trademark opposition proposed in this version, a draft transitional provision is introduced, particularly stipulating that when a decision of an opposition case is reversed on appeal and remanded to the TIPO after this version of the amended Trademark Act takes effect, the current provisions concerning opposition shall still apply.
(translated based on the news published on the TIPO’s website: https://www.tipo.gov.tw/tw/cp-85-893218-b6666-1.html)
*Trademark Division of Tai E International Patent & Law Office
Compared with the version of January 7, 2021, the main changes of this version are as follows.
1. Amending provisions concerning inadmissibility of reexamination and contentious cases
A draft proviso is introduced in the relevant draft provision, stipulating that when a defect is deemed rectifiable, the TIPO shall notify the relevant party to amend the defect within a specified period of time before issuing a decision to dismiss a reexamination or contentious case.
2. Amending provisions concerning appointment of an advocate for appellate litigation of reexamination and contentious cases
A draft provision is introduced, stipulating that a person who is not an attorney-at-law may act as an advocate for appellate litigation of reexamination and contentious cases under certain conditions.
3. Deleting former draft provisions concerning court costs of appellate litigation of reexamination
The former draft provisions in question are deleted because the Judicial Yuan has the sole and exclusive authority to account and tax court costs. Instead, the relevant provisions of the Code of Civil Procedure shall apply mutatis mutandis.
4.Adding a basis for an intervener to initiate a lawsuit
To strengthen the function of dispute resolution in appellate litigation of trademark reexamination and contentious cases, draft provisions stipulating that an intervener in a reexamination or contentious case may initiate appellate litigation are introduced.
5. Adjusting conditions for presenting new evidence during appellate litigation of trademark contentious cases
Considering the aim to improving remedial efficiency in light of the peculiarity of trademark contentious cases, a draft proviso is added in the relevant draft provision to allow a party, or an intervener, involved in a contentious case to present new evidence on appeal under certain conditions.
6. Adjusting the applicability of transitional provisions
In terms of the repeal of trademark opposition proposed in this version, a draft transitional provision is introduced, particularly stipulating that when a decision of an opposition case is reversed on appeal and remanded to the TIPO after this version of the amended Trademark Act takes effect, the current provisions concerning opposition shall still apply.
(translated based on the news published on the TIPO’s website: https://www.tipo.gov.tw/tw/cp-85-893218-b6666-1.html)
*Trademark Division of Tai E International Patent & Law Office
