June 2024
Amendments to Taiwan Enforcement Rules of the Trademark Act Clarify Supplementary Provisions for Accelerated Trademark Registration Examination
June 2024
Jane Tsai and David Hung
In response to the annual increase in trademark registration applications and the constraints on examination personnel, Taiwan amended the Trademark Act on May 24, 2023, to add an expedited examination system for trademark registration under Article 19, Paragraph 8. Applicants "seeking rights approval promptly" can now apply for the accelerated examination system. To align with the new accelerated examination process in the Trademark Act, amendments were made to the Enforcement Rules of the Trademark Act, which came into effect on May 1, 2024. These amendments include supplementary provisions that clarify the criteria for "seeking rights approval promptly" in the accelerated trademark registration examination process. The specifics are outlined below:
1. Clarification of "Seeking Rights Approval Promptly"
The term "seeking rights approval promptly" as mentioned in Article 19, Paragraph 8 of the Trademark Act is defined in Article 19-2, Paragraph 1 of the Enforcement Rules of the Trademark Act. It refers to situations where:
a. The specified "entire" goods or services in the trademark registration application are already in actual use or undergoing considerable preparation for use.
b. The specified "part" of the goods or services in the trademark registration application must not only be in actual use or undergoing considerable preparation for use but also demonstrate the necessity and urgency to acquire rights in business.
2. Interpretation of "Considerable Preparation for Use"
The term "considerable preparation for use," as explained in the legislative description of Article 19-2 of the Enforcement Rules of the Trademark Act, refers to circumstances closely related to the intended market use of the trademark. Applicants should specifically indicate the timing of the intended use of the trademark, the specific goods, services, marketing channels, or locations, and may provide evidence such as samples of goods or services, advertising documents, or business plans to support their claim.
3. Definition of "Necessity and Urgency to Obtain Rights"
The term "necessity and urgency to obtain rights," as outlined in Article 19-2, Paragraph 2 of the Enforcement Rules of the Trademark Act, refers to any of the following situations involving the trademark application:
a. Unauthorized use by a third party or considerable preparation for such use.
b. Receiving an infringement warning from a third party regarding the use of the applied trademark.
c. A third party requesting authorization for the applied trademark.
d. Planning for market launch includes coordinating sales or distribution contracts with partners.
e. Planning to participate in exhibitions and secure contracts with the exhibition organizers.
f. Other circumstances that demonstrate a commercial necessity and urgency to obtain rights.
The contents of all materials (Content) available on the website belong to and remain with Lee, Tsai & Partners. All rights are reserved by Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors' opinions do not represent the position of Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Lee, Tsai & Partners.
Jane Tsai and David Hung
In response to the annual increase in trademark registration applications and the constraints on examination personnel, Taiwan amended the Trademark Act on May 24, 2023, to add an expedited examination system for trademark registration under Article 19, Paragraph 8. Applicants "seeking rights approval promptly" can now apply for the accelerated examination system. To align with the new accelerated examination process in the Trademark Act, amendments were made to the Enforcement Rules of the Trademark Act, which came into effect on May 1, 2024. These amendments include supplementary provisions that clarify the criteria for "seeking rights approval promptly" in the accelerated trademark registration examination process. The specifics are outlined below:
1. Clarification of "Seeking Rights Approval Promptly"
The term "seeking rights approval promptly" as mentioned in Article 19, Paragraph 8 of the Trademark Act is defined in Article 19-2, Paragraph 1 of the Enforcement Rules of the Trademark Act. It refers to situations where:
a. The specified "entire" goods or services in the trademark registration application are already in actual use or undergoing considerable preparation for use.
b. The specified "part" of the goods or services in the trademark registration application must not only be in actual use or undergoing considerable preparation for use but also demonstrate the necessity and urgency to acquire rights in business.
2. Interpretation of "Considerable Preparation for Use"
The term "considerable preparation for use," as explained in the legislative description of Article 19-2 of the Enforcement Rules of the Trademark Act, refers to circumstances closely related to the intended market use of the trademark. Applicants should specifically indicate the timing of the intended use of the trademark, the specific goods, services, marketing channels, or locations, and may provide evidence such as samples of goods or services, advertising documents, or business plans to support their claim.
3. Definition of "Necessity and Urgency to Obtain Rights"
The term "necessity and urgency to obtain rights," as outlined in Article 19-2, Paragraph 2 of the Enforcement Rules of the Trademark Act, refers to any of the following situations involving the trademark application:
a. Unauthorized use by a third party or considerable preparation for such use.
b. Receiving an infringement warning from a third party regarding the use of the applied trademark.
c. A third party requesting authorization for the applied trademark.
d. Planning for market launch includes coordinating sales or distribution contracts with partners.
e. Planning to participate in exhibitions and secure contracts with the exhibition organizers.
f. Other circumstances that demonstrate a commercial necessity and urgency to obtain rights.
The contents of all materials (Content) available on the website belong to and remain with Lee, Tsai & Partners. All rights are reserved by Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors' opinions do not represent the position of Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Lee, Tsai & Partners.
