Taiwan Comes Up With the Draft Amendment to the Trademark Act
Taiwan has been one of the fastest-growing economies in the world and has marked its strong reputation in Southeast Asia becoming a developed country in the region. Its export-oriented industrial economy is ranked 21st in the world by Nominal GDP and 20th in the world by PPP as per the World Bank and IMF report. With a strong influence in the market, it is one of the most sought industrial places among leading economies in the world. It becomes important to get in touch with important IP news which can affect the inventors and businesses planning to set up in Taiwan.
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Taiwan publishes its latest draft amendment to the Trademark Act earlier in 2021. With the latest amendments being published, it is expected that within two years, the draft amendment will be finalized resulting in the publication of the new Trademark Act. This draft amendment focuses on examination processes and brings changes to it, along with the substantial change in the invalidation and cancellation action and with the remedial procedures as well. A few of the major changes can be enumerated below.
Few Changes
In case, an applicant, if there is a formal rejection of the trademark application, the remedy with the applicant will be to file an appeal to the Board of Appeal. On the other hand, in case of invalidation/cancellation cases, if the petitioner is not satisfied, he/she can similarly file an appeal to the Board of Appeals. As per the draft amendment, there will be a Committee which is the “Committee for Review and Dispute Resolution,” that will be established within Taiwan Intellectual Property Office (TIPO) which will independently review all the rejected cases and examine the invalidation and cancellation actions.
Abolishment of the appeal proceedings at the Board of Appeal is also one of the significant changes being brought in the amendment which has tried to shift the litigation proceedings from administrative to civil. In case, as stated previously, the applicant dissatisfied by the decision can appeal to the Board of Appeal. With this amendment, the applicant can directly seek civil remedy at the IP and Commercial Court. With this, the applicant can seek judicial review of the decision. In all invalidation and cancellation cases, the TIPO will be named as the defendant. Participating in the oral hearing, where the two parties can participate in the capacity of plaintiff and defendant can help in exhaustively expressing their opinion. In case a party is not satisfied by the decision in an invalidation/cancellation case, they can further appeal to the Supreme Court.
The amendment also abolished the opposition procedures. With an option to submit third-party observation during prosecution of the trademark application for rectification of any examination loophole, the opposition procedure seems to be of no use. For making any party file the invalidation action, the limit of qualification is relaxed so that any party can file for any reason in the Trademark Act.
Through these amendments, one can take a note that this will make the remedial procedure more efficient concerning either rejection of trademark application or with invalidation and cancellation claim. Also with the formulation of the Committee for Review and Dispute Resolution, it can be further assumed that this will have a good impact on the procedural aspects related to dispute resolution.
Recent news from Taiwan
Recently, Taiwan’s Ministry of Economic Affairs tightens the control of Taiwanese technology and IP going to China by making two regulatory amendments. These two amendments are related to Article 4 of the Examination Guidelines for Investment or Technical Cooperation in the Mainland Area and Article 5 of the Regulations Governing Approval for Investment or Technical Cooperation in the Mainland Area.
The Ministry stated that “Selling or licensing Taiwanese technology or IP will now be considered ‘technical cooperation’ and must be approved in advance. This includes indirect technical cooperation through a third country,” adding that the scope of the sectors targeted has also been widened from the integrated circuit sector to any “specialist technology.”
These two amendments hope to tighten the control of Taiwanese investment or technical cooperation coupled with the issues of national security of Taiwan. With these amendments, it will be difficult for any authorities in Taiwan to obtain the approval from Ministry of Economic Affairs concerning investment or technical cooperation in China. The approval must be sought from the Ministry of Economic Affairs since it being the authority in charge of the examination.
Author: Saransh Chaturvedi an associate at IP & Legal Filings, in case of any queries please contact/write back to us at support@ipandlegalfilings.com.
