2017.8.21
Jane Tsai
The Ministry of Justice issued the Fa-Jian-10600124710 Circular of August 21, 2017 (hereinafter, the “Circular”) to communicate that lawyer who handles trademark-related business is only required to join any bar association within the jurisdiction of the Intellectual Property Office (hereinafter, the “IPO”) in order to perform his/her duty before the IPO.
According to the Circular, Article 3 of the Trademark Law provides: “The competent authority in this Law shall be the Ministry of Economic Affairs (Paragraph 1). Trademark business shall be handled by a dedicated agency designated by the Ministry of Economic Affairs (Paragraph 2).” In addition, Article 2, Subparagraph 3 of the Statute for the Organization of the Intellectual Property Office provides: “The IPO shall be in charge of the following matters:…(3) examination of cases involving trademark registration application, opposition, invalidation, cancellation or extension and administration of exclusive trademark rights.” Therefore, if a lawyer is retained to serve as a trademark agent to handle all procedural rights relating to trademarks under the Trademark Law and other laws and regulations (such as trademark registration application, opposition or submission of statements), this involves analysis and judgment of facts associated with individual cases as well as the provision of legal opinions on the application of laws or engagement of a legal act as an agent and is certainly the performance of a lawyer’s duty. Since the IPO is the competent authority under the Trademark Law and handles matters such as the examination of cases involving trademark registration application, opposition, invalidation, cancellation or extension in this nation, when a lawyer serves as a trademark agent to handle trademark-related business, which falls within the jurisdiction of the IPO, the lawyer is only required to join any bar association within the jurisdiction of the IPO in order to perform his/her duty before the IPO.
According to this Circular, since the IPO’s jurisdiction covers the entire country, lawyers may perform their duties before the IPO after joining any bar association in this country.