Amendments to Trademark Act impose stricter restrictions on trademark agents and introduce accelerated examination system

On 1 May 2024, the May 2023 amendments to Taiwan’s Trademark Act entered into force. These amendments have imposed stricter regulation of trademark agents and an accelerated examination process.

Qualifying as a trademark agent 

Foreign applicants with no domicile or business establishment in Taiwan are required to appoint an agent when applying for trademark registration and handling other trademark matters.

Previously, the only requirement to be a trademark agent was residence in Taiwan, which did not necessarily mean that the agent had sufficient professional knowledge and experience to competently prosecute trademark applications.

The new amendments require trademark agents to register with the Taiwan Intellectual Property Office (TIPO) and have established rules outlining how the office will manage them. 

To register, a person must meet certain requirements under Article 6. One can only become an agent if they have a domicile in Taiwan and are either: 

•  a professional who may legally handle trademark-related matters (a lawyer or accountant licensed to practice in Taiwan); or
•  a trademark agent (any other domiciled person who has passed TIPO’s Trademark Professional Capability Certification Examination).

TIPO has also announced details about how it will manage registered agents. It will establish a Trademark Agent Register on the official TIPO website. Members of the public will be able to search the register to find or verify registered trademark agents in Taiwan. Further, registered agents will be required to attend professional training courses every year.

Accelerated examinations of new applications

Currently, TIPO typically takes six to eight months to review a new trademark application before issuing the first official notice. In response to feedback from brand owners, the new amendments have introduced an accelerated examination process.

An applicant can apply for accelerated examination by paying an application fee of 6,000 New Taiwan dollars (approximately US$184) per class and stating reasons why accelerated examination is warranted. 

Applicants must file a regular registration application and receive an application number before applying for accelerated examination, which they will  need to file the latter application. This application for accelerated examination must be filed before TIPO issues its first official notice. 

Potential applicants must be aware that certification marks, collective membership marks and collective trademarks are not eligible for accelerated examination.

Upon receiving an accelerated examination application, TIPO will first check whether the fee has been paid. It will then assess whether the supplied reasons meet the following criteria:

•  the applicant has used – or is preparing to use – the mark on or with the designated goods/services and has submitted evidence of such use; and
•  the evidence of use must show the exact same mark as the filed mark and its use in Taiwan.

Further, if an applicant files a multi-class application but only needs to apply for accelerated examination for a specific class, then the application will need to be divided.

Necessity and urgency for commercial reasons

In each case, TIPO will review the facts surrounding claimed urgency and necessity. It may decide to grant accelerated examination in one or more of the following circumstances:

• if a third party has used the mark without the applicant’s consent;
• the applicant has received a trademark infringement letter from a third party;
• the applicant has received a request to license the trademark from a third party;
• the applicant submits a contract showing that it will attend a trade show; or
• the applicant submits distribution contracts to prove there is a plan to launch goods/services in the market.

TIPO began accepting applications for accelerated trademark examination on 1 May 2024.