After lengthy deliberation, the Legislative Yuan passed third reading to “amendments to certain articles of the Trademark Act” on May 9th, 2023. The key amendments include adding of an accelerated examination mechanism, the establishment of a trademark agent management system, and the clarification that nominative fair use does not constitute infringement. The highlights of the amendments are as follows:
- Adding a mechanism to accelerate examination for trademark applications.
To meet the needs of industrial development and to protect public rights, it is stipulated that trademark applicants have the necessity to timely obtain trademark rights. The amendments add the basis and applicable scope of the accelerated examination for trademark applications (Articles 19, 94, 104).
- Establishing a management mechanism for trademark agents, meanwhile, protecting the rights and interests of existing trademark professionals.
- Considering the high level of expertise in the trademark business, the amendments add qualification requirements and relevant provisions for practicing as trademark agents, and it is stipulated that trademark agents should be registered. In accordance with the regulations on trademark agent registration and management, a list of trademark agents is added for public inquiries (Articles 6, 12).
- The amendments also add transitional provisions and deadlines for trademark agent registrations to safeguard the rights and interests of those engaged in trademark agency business before the implementation of the amended laws (Article 109-1)
- Simplifying the procedures for trademark holders to receive customs notices for infringement recognition.
In keeping with simplifying operational procedures of the Customs Administration, Ministry of Finance, trademark holders can first determine whether imported or exported goods infringe their rights through photos provided on the customs platform, and if necessary, they can go to customs for infringement recognition in person (Article 75).
- Clarifying the eligible entity of trademark applicants.
To meet the practical needs of conducting business or operations under a commercial name or group name and facilitate the management and maintenance after obtaining trademark registrations, the amendments add partnership organizations without legal personality (e.g. accounting firms, law firms, or architecture firms), unincorporated groups established by law (e.g. associations registered under the Civil Associations Act), and businesses registered under the Business Registration Act (sole proprietorships or partnerships) as eligible entities being trademark applicants, with standing to sue (Articles 19, Paragraph 3 and Articles 99).
- Specifying the uses of others’ trademarks can be claimed as fair use.
The original provision in Subparagraph 1, Paragraph 1 of Article 36, , regarding fair use includes both descriptive fair use and nominative fair use. Considering the different nature between these two types, the amendments add Subparagraph 2 for applicable conditions of nominative fair use and specify the consequences of the use (Article 36).
After the implementation of the amended law, shortening of the trademark registration examination will be able to meet the timely needs of the public or businesses for obtaining trademark registrations. The establishment of trademark agent management mechanism will also improve on safeguarding the rights and interests of trademark applicants. Only certain articles of the amendments were approved on May 9th, and the formal provisions of the amendments will be subject to the announcement of Presidential Order. In addition, as for reexamination mechanism that the public concerned, it is still under deliberation in the Legislative Yuan due to significant changes.