Three major changes to Taiwan’s Trademark Act that applicants need to know

On 9 May 2023 the Legislative Yuan enacted a new bill to amend Taiwan’s Trademark Act after it passed the third reading. The amended act includes three major elements – an accelerated review mechanism for applications, regulations on trademark agents and a new defence against trademark infringement.

Accelerated review mechanism for trademark applications

According to the amended act, if an applicant needs to obtain trademark rights immediately, it may request that the Taiwan Intellectual Property Office (TIPO) speed up the application review procedure – after submitting a statement of facts and reasons and paying an accelerated examination fee.

TIPO has long faced demands for expedited trademark review so that rights can be obtained sooner to accommodate a product’s marketing schedule or enable participation in exhibitions; this new process was established in response to these needs. It is expected that the review period of an accelerated review may be reduced from seven months to around two months.

Regulations on trademark agents

The amended act stipulates that any trademark applications or related affairs of an applicant, rights holder or other interested person not domiciled or with a business establishment in Taiwan must be handled by an agent that is domiciled in Taiwan. A trademark agent must either:

• be qualified as a lawyer;
• be a professional that is allowed to handle trademark matters;
• successfully pass an examination held by the organisation entrusted by TIPO; or
• have practised as a trademark examiner for a designated period of time.

Indicative fair use of trademarks: a defence against infringements

In Taiwan, it is a well-established view that there are two types of fair uses of trademarks: descriptive and indicative. However, to dispel any legal uncertainty, the amended act clearly adopts the indicative fair use defence to trademark infringement in Article 36.1(2).

The amended act states that if the use of another party's trademark is necessary to indicate their goods or services, is conducted in accordance with honest practices in industrial or commercial matters and no likelihood of confusion exists for relevant consumers, then it may qualify as indicative fair use of a trademark.

The amended act is currently waiting to be formally announced by the president.