July 2023
Jane Tsai and Julian Lai
On May 24, 2023, the President issued Hua-Zhong-One-Jing-11200043251 Directive of May 24, 2023 to formally promulgate the Amendments to the Fair Trade Act with the effective date to be set by the Executive Yuan. The Amendments are highlighted below:
1. Introducing an accelerated examination mechanism for trademark registration applications (Article 19, Paragraph 8, Article 94, and Article 104)
To meet the needs of the industries and consider for reference the international practice of putting in place requirements for accelerated examination of trademark registration application cases that meet statutory requirements, the Amendments added the basis and scope of application for the accelerated examination of trademark registration applications.
2. Expanding eligible trademark rights holders (Article 19, Paragraph 3 and Article 99)
To cater to the practical market requirements for transactions with external parties under business or group names and facilitate an applicant’s management and maintenance of registered trademarks, the Amendments specifically provide that partnerships without legal personality under substantive law (such as law firms, accounting firms, and architectural firms), unincorporated entities established in accordance with law (such as associations established under the Civil Associations Act), and businesses registered under the Commercial Registration Act (e.g., sole proprietorships or partnerships) are all eligible trademark applicants and have the right to bring legal actions.
3. Clearly stipulating the specific circumstances in which fair use may be claimed when the trademark of another person is used (Article 36)
The Amendments specifically provide for nominative fair use, which is not constrained by the effects of trademark rights, by adding the wording that “as long as it is necessary to use the trademarks of another person to indicate the goods and services of such person by an honest and trustworthy method that meets business transaction practices to indicate the purposes of using goods or services, provided that this shall not apply if the results of such use are likely to cause confusions or misidentification among relevant consumers.” For example, a business operator that uses the trademarks of various mobile phones in an advertising sign for providing mobile phone and communications repair services to indicate the services for the brands of the phones of others would not constitute a potentially infringing use.
4. Streamlining the process for trademark owners notified by the customs to verify infringement (Article 75)
To align with the practical operations of the Customs Administration of the Ministry of Finance, the Amendments deleted the requirement for trademark owners to “go to the customs” within a specified period to verify trademark infringement. Instead, trademark owners can determine infringement through the photographs of the goods provided by the customs without the need to visit the customs in person.
5. Establishing a system for managing trademark agents (Article 6 and Article 12)
The Amendments specify that only individuals with specific qualifications in trademark expertise can serve as trademark agents, and they must be registered before engaging in trademark agency business. The competent authority should maintain a list of registered trademark agents for public inquiry.
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