Trademark Act to be amended to regulate trademark agents

Taiwan’s Intellectual Property Office (TIPO) has held a public hearing on draft amendments to the Trademark Act, which aims to introduce new regulations for trademark agents.

Article 6(1) of the act stipulates that an applicant, holder or other interested person without a domicile or business establishment in Taiwan must appoint a trademark agent to apply for a trademark and handle related affairs. Article 6(2) requires that trademark agents be domiciled in Taiwan.

TIPO previously discussed this issue and stated that it intended to add further qualifications for trademark agents, but ultimately did not. However, it noted more recently that the sole requirementfor a trademark agent (ie, that it be domiciled in Taiwan) is insufficient, particularly given that such agents are not regulated and trademark matters are often complicated and should be handled by a professional. TIPO is therefore in the process of amending the Trademark Act, with plans to finalise changes before the end of 2020 and then submit them to the Legislative Yuan in 2021.

According to its database, TIPO received approximately 80,000 new trademark applications in last three years. In roughly 80% of these cases, applicants had appointed a trademark agent. TIPO’s website has published information for 549 trademark agents who have represented trademark applicants and handled more than 20 cases in one year in order to assist prospective new applicants to find an agent if they need. Under current practice, this can be an attorney, accountant or other representative. Attorneys and accountants can handle trademark matters according to the Attorney Regulation Act and the Certified Public Accountants Act, respectively. TIPO has stated that the Trademark Act will only stipulate the qualifications for other agents and will require such other agents to register with the office in order to handle trademark matters in the future.

According to the current draft amendment, in addition to the already qualified practitioners, individuals can qualify as a trademark agent if they:

• successfully pass the examination held by the organisation entrusted by TIPO; or
• handle trademark matter for five years (this includes persons who have been TIPO examiners).

TIPO will require trademark agents to receive education for six hours each year in order to retain this qualified status.

During the discussion at the public hearing, the main issue decided was that the regulation of Trademark Agents, including registration and recordation and requirements for further education, will not apply to attorneys and accountants, as TIPO noted that these professionals are already regulated under the abovementioned acts. As a result, there will be different standards for trademark agents, as one group of agents will handle trademark matters based on the relevant laws (attorneys and accountants), while the other standard will be that created and recognised by TIPO for non-attorney and non-accountant trademark agents.