Legislature of Taiwan, China, Passed Amendments to Some Articles of the Trademark Act

June 29, 2023

In May, 2023, the Legislative Yuan of Taiwan, China, passed amendments to some articles of the Trademark Act. The official effective date of the amended articles has not been announced yet. The key points of this amendments are as follows:

· the accelerated review mechanism for trademark applications is revised and enlarged;

· a trademark agent management mechanism is established and the work rights and interests of existing trademark practitioners are protected;

· the process for trademark owners to receive notifications from the customs and conduct infringement determination is simplified, that is, trademark owners can first make judgment through photo archives provided by the customs platform, and then personally go to the customs for infringement determination if necessary;

· qualified trademark applicant bodies are revised and enlarged, including partnership organizations (such as law firms, architecture firms), legally established non-corporate entities (such as temples, associations, production-sale groups), and legally registered sole proprietorship or partnership firms;

· the applicable requirements for reasonable use of defenses in specific circumstances are clarified;

· it is clarified that trademarks that contain functional elements shall not be registered, unless the elements are represented by dashed lines;

· in the article "a trademark application shall be rejected if the proposed trademark is identical with the name of a famous juristic person, entity or other group, and hence likely to cause confusion with the relevant public", the requirement of "identical with" is amended to "identical with or similar to";

· an exception to the exhaustion of trademark rights is added, i.e., in cases involving parallel imports, "in order to prevent deterioration, damage, unauthorized processing, modification of the goods after circulation in the market, or for any other fair reasons", trademark owners may claim trademark rights in relation to the goods;

· the qualification of a petitioner requesting for invalidation declaration based on absolute reasons shall be enlarged from interested parties to anyone.

(Source: Unitalen)