The main contents of the passed articles in this amendment are as follows:
The introduced amendments include the implementation of an accelerated review mechanism, the establishment of a trademark agent management system, and the clarification of situations where descriptive and fair use does not constitute infringement concerns. With the new law in effect, trademark application reviews will be more flexible and expedited. Trademark applicants and rights holders will also have the option to choose professional trademark agents, which will aid in corporate trademark strategies and enhance overall administrative efficiency.
The key revisions include:
1. Addition of an accelerated examination mechanism for trademark registration applications.
To meet the immediate need of the domestic industry for obtaining registered trademarks and aligning with international standards, amendments have been made to provide the basis and scope of application for the accelerated review of trademark registration applications (Articles 19, 94, and 104)
2. Establishment of a trademark agent management mechanism and protection of the employment rights of existing trademark practitioners.
2.1. It is specified that individuals with trademark expertise may serve as trademark agents and must be registered to conduct trademark agency business. The management measures for trademark agents are authorized to be established by the competent authority through regulations, and a list of trademark agents will be maintained for external reference (Articles 6 and 12).
2.2. The addition of transitional provisions and the deadline for applying for registration is aimed at explicitly safeguarding the employment rights of those who have been engaged in trademark agency business before the implementation of the new law (Article 109-1).
3. Simplifying the process for trademark owners to be notified by customs authorities for infringement determinations.
In alignment with the simplification of border protection measures by the Ministry of Finance’s Customs Administration, trademark owners can make preliminary judgments through photo files provided by the customs platform. It is only necessary to personally visit customs for infringement determinations when required (Article 75).
4. The addition of eligible applicant entities.
In response to the practical needs of business entities in the market, it is stipulated that partnership organizations (such as law firms or architectural firms), legally established unincorporated associations (such as temples, associations, or production and marketing groups), and legally registered sole proprietorships or partnership firms can qualify as trademark applicants and gain legal standing for litigation (Article 19, Paragraph 3, and Article 99).
5. Clear provisions specify that in specific circumstances when using someone else’s trademark, a defense of fair use can be claimed.
It is expressly stated that non-binding use of trademarks for descriptive and fair use is allowed. For example, in the case of advertising signs for mobile and communication repair services that use trademarks of various mobile phone brands to indicate the brands of devices serviced by the business, such use will not be considered as raising infringement concerns (Article 36).
In recent years, trademark application cases have continued to grow, with over 100,000 classes filed annually for six consecutive years. Given the existing examination capacity, this growth may result in delays for businesses to obtain registered trademarks, affecting their trademark strategies. The new law, in line with international legislation, introduces an accelerated review mechanism. When applicants have an immediate need to obtain rights, they may submit a request with facts and reasons, pay an accelerated review fee, and the trademark authority will conduct an expedited review.
Under the current trademark law, anyone with a domicile in the country can engage in trademark agency business. This has led to situations where individuals without adequate trademark expertise can easily attract clients with low prices or engage in unauthorized agency practices, which are difficult to regulate. The proposed amendments to the trademark law aim to align with international standards and introduce various new measures to protect trademark owners.
To address these issues, it is deemed necessary to require trademark agents to possess a certain level of professional competence. This ensures that they can appropriately examine evidence and apply the law on behalf of parties involved. By establishing a trademark agent management system, information becomes transparent and easily accessible to the public, thereby providing comprehensive protection for the rights of trademark applicants.
Furthermore, regarding the defense of “descriptive fair use” in infringement cases, there has been ambiguity in its application due to interpretations under current law. The proposed amendments aim to provide clear criteria for when the use of another person’s trademark in specific circumstances can be considered “fair use.” This clarification helps prevent trademark owners from frequently resorting to litigation, thereby avoiding disruptions to business development.
Source：TIPO 經濟部智慧局