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Amendment to TW Trademark Act Passed and Promulgated   
 

Irene Liu/Chief, International Dept.

●    Introduction

2011.07.15

Draft Amendment to Taiwan Trademark Law was passed after three readings by the Legislative Yuan on May 31, 2011 and was promulgated by the Presidential Office on June 29, 2011. It is expected that the new Act shall come into effect in 2012. This Amendment is involved with substantive revisions since the trademark law was last amended in 2003. The main issues of the Amendment are listed as follows.

●    Key Issues

 
(1) Expanding the scope of subject matter eligible for protection as registered trademarks:
This means scent, motion, hologram and other non-traditional marks are protectable and registrable under the new Act.

(2) Specifying various modes of trademark use:
In addition to the traditional ways, the use by digital audio-visual media, electronic media, the Internet or other media is also recognized as trademark use.

(3) Abolishing provisions with regard to paying registration fees in installments:
This is to avoid that trademark rights lapse due to unintentional failure to pay the second installment. Also, this can increase administrative efficiency.

(4)Amending disclaimer system:
The Amendment adds a provision that, in cases of co-existing applications of one single mark, if there is any obvious defect to bar trademark registration, the later application cannot be registered, even though a letter of consent from the prior right holder is obtained.

(5) Allowing reinstatement of rights after failure to pay registration fees within prescribed time limits:
If an applicant unintentionally fails to pay the registration fee in time, he/she is given an additional six months to pay twice the registration fee for the reinstatement of the right. However, if such reinstatement impacts a third party’s trademark right obtained during the six-month period, the reinstatement should not be allowed.

(6) Adding provisions on the obligations to prove the use of prior-registered trademarks in invalidation or revocation proceedings:

In invalidation or revocation proceedings, if the prior trademark upon which an invalidation/revocation is based has been registered for three years or more, supporting evidence proving the use should be submitted.

(7) Amending requirements on damage claims and provisions on calculation of damages:

<a.>The trademark owner has to prove that the infringement is intentional or negligent in order to claim damages.
<b.> The Amendment abolishes the minimum amount of statutory damages, i.e. 500 times the unit retail price of the infringing goods

(8) Strengthening protection of well-known trademarks:
If there is likelihood of dilution by blurring the distinctiveness or tarnishing the reputation of a well-known trademark, an act will be regarded as infringement.

(9) Empowering Customs to seize alleged infringing goods ex officio:
The Customs officials are empowered to hold imported or exported goods that allegedly infringing trademark rights.

(10) Specifying provisions on geographical certification marks and geographical collective trademarks:
The Amendment specifies provisions on geographical certification and collective marks. A penalty clause applicable to the infringement of certification mark is added to the new Act.
 

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