Ankwei Chen
The Ministry of Economic Affairs promulgated the Operating Guidelines for Third-Party Opinions in Trademark Registration Applications (the “Guidelines”) in its Jing-Sho-Zi-10820031571 Directive dated June 20, 2019, effective immediately. The Guidelines are highlighted below.
Point 1 states that the Guidelines are formulated by the Intellectual Property Office (“TIPO”) to provide a basis for third parties to submit opinions during the examination of a trademark registration application so as to facilitate the investigation of evidence by the examiner and to enhance the legality of trademark registration.
Points 2 through 7 of the Guidelines stipulate the procedural requirements for the submission. Point 2 specifies that any third party other than the applicant can submit an opinion, and the submission may be made anonymously. In Point 3, the submission of the written opinion shall be made before a decision on the application is made, and if the application withdrawn, rejected or approved or if any invalidation against it has been approved or rejected, such written opinion will not be processed. Point 4 provides that a third party may argue that the trademark application shall be rejected pursuant to one or more of the grounds under Article 29, Paragraphs 1 or 3, Article 30, Paragraph 1 or 3 and Article 65, Paragraph 3 of the Trademark Law, and provide supporting evidence for such argument.. For Point 5, the opinion must be made in writing; a fax submission must be further marked with the wording “third-party opinion” and the application case number to facilitate the sorting of documents and subsequent processing. Submissions that are not made in writing shall be excluded from examination. Under Point 6, a third party may follow up its opinion with supplementary opinions or evidence as long as no decision on the application has been rendered yet.
Point 7 covers what kind of evidence may be provided with a third-party opinion: (1) lack of distinctiveness; (2) another person has first used the trademark; (3) the application shows intentional copying and involves trademark squatting; (4) the trademark is a famous trademark or mark; (5) infringement of copyrights, patent rights or other rights; or (6) any other objective and concrete evidence sufficient to prove that any of the circumstances that will disallow the trademark application from being granted registration exists .
Points 8 through 10 of the Guidelines go over how the opinion shall be handled. The examiner shall, after receiving the third party opinion, review it to determine whether its contents are correct, and there is objective evidence supporting the rejection of registration for the application. . If the examiners fail to forward the cited evidence to the applicant for its opinions, such written third-party opinions shall not serve as the fact basis for approving or rejecting an application. If a third party is not a party to the trademark registration procedure, the examiner is neither required to respond to the third party whether its opinion was well-taken, nor is the examiner required to inform the third party of the final decision on the application. If the third party has any opinion concerning the final decision of the application, it must file an opposition or invalidation application separately.
Lastly, the Guidelines shall apply mutatis mutandis to certification marks, collective trademarks or collective membership marks.