ALIPO IP ATTORNEYS

How to accelerate the trademark examination in Taiwan?

Fortunately, the amendment to the Trademark Act successfully passed the third reading by the Legislative Yuan on May 9, 2023 in Taiwan. The new added acceleration system of the trademark examination will be expected to implement soon in the future. This article will explain all kinds of application methods based on the current Regulations and system for your information.

Regular application

According to Article 19, paragraph 1 of the current Trademark Act, “An application for trademark registration shall be made to the Registrar Office by submitting an application containing (the name and address of) the applicant, a reproduction of the trademark, and the list of designated goods or services.”.

Besides, as stated in Article 2, paragraph 1 of the Enforcement Rules of the Trademark Act rules “Any application or request filed under the provisions of the Act or these Rules shall, except those transmitted by electronic means pursuant to Article 13 of the Act, be in written form and affixed with the signature or seal of the applicant or the signature or seal of the trademark agent only, if such agent is appointed. In order to check the identity or the qualification of the applicant, the Registrar Office may give the applicant a notice to furnish his/her identification documents, the certificate of juridical person or other documents of proof of the applicant’s qualification.”

Thus, a regular application shall meet the following documents to conform to the requirements: 

1. Submission of the paper-based application form;  
2. Disclosure of necessary applicant details;  
3. Specifying the goods or services with which the trademark is designated for use; and 
4. Submitting the representation of the trademark. 

Once the requirements are met, the application is submitted to the competent authority, namely the Intellectual Property Office under the Ministry of Economic Affairs (hereinafter referred to as the 'TIPO'). Subsequently, TIPO will proceed to the examination of the trademark, the examiner will issue the first office action around 8 months after the filing. If there are no grounds for refusal during the examination of the trademark, then TIPO will issue Notice of Allowance. The applicant can pay the registration fee during the official set term and approximately after 1 month of payment, obtain trademark rights through publication. Therefore, considering the aforementioned timeline, assuming an uninterrupted application process and smooth examination, it still takes at least 9 months to acquire trademark rights, allowing for subsequent business planning and franchising matters.  

However, in practice, applicants often seek to file the trademark applications only after performing the business operation and facility. If the trademark failed to grant registration after 8 months, apart from the time and monetary costs incurred in brand operation, in the worst-case scenario, the applicant may also face subsequent litigation and disputes due to similarity with other party’s trademark, which will create a significant impact. Therefore, the applicant should handle the matter precisely with caution.

Fast Track Application

With the continuous increase in the number of trademark applications in recent years, there are about more than 12,000 applications/yearly. TIPO has been vigorously promoting electronic applications to reduce the burden of document printing and physical file storage. In addition, TIPO introduced fast track application since May 1, 2020, aimed at expediting the examination process for applications that meet the following criteria. 

Three requirements: 

1. Filing application electronically; 
2. Designation of the goods or services to be identical to the electronic system operated by TIPO; and 
3. Completing the payment electronically.  

Due to the designation of the goods or services is provided by the applicant, which does not comply with the classification of the goods or services, or due to translation to make the term unspecified, that will lead examiners to allocate considerable effort into categorizing and issuing examination opinions to ascertain the actual goods or services intended by the applicant, thus creating a significant examination burden. 

Filing the trademark applications through fast track system, it will help the gap of shortage of examiners in TIPO, besides, the fast-track application will be searched and conducted by computerized system. This enables TIPO to maintain a consistent period for issuing the first notice and the applicant to receive the first office action within a shorten period.   

From the below figure shown [1], as of the submission deadline, the cases processed through the regular application system are only examined till the filing date of September 29, 2022, taking about 8 months for the examination. However, cases processed through the fast-track application system have progressed to those submitted up until November 29, 2022, resulting in an advancement of 2 months in the processing timeline. 

Accelerated examination system

Even though the fast track application allows the applicant to receive the office action approximately 2 months earlier than the regular applications, however, 6 months of examination period is still a long term and remains impractical for applicants who require to wait the examination period required more than 6 months. By this case, the proposed amendments to the Article 19 and 104 of the Trademark Act draw upon international relevant legislation to introduce an “Acceleration of trademark examination system”, that can help applicants to get trademark registration immediately. The relevant clauses and amendments are explained as follows:  

Amended clauses
• Article 19, Section 8 
A trademark applicant seeking rights approval promptly may submit facts and reasons, along with the accelerated examination fee, to the Registrar Office to initiate the accelerated examination process. Such examination shall not apply to an application to which a notice of amendment or stating grounds for refusal has been issued by the Registrar Office.   

[Explanation of Amendments] 

1. Due to the increasing number of trademark applications yearly and the limited manpower of examiners, there are limitations to shorten the examination time. However, in order to meet the needs of industrial development and protection of public rights, under this situation, when it is necessary for the applicant to obtain trademark registration immediately (such as confirming rights due to infringement or litigation, or meeting special needs like products already in the market), TIPO may expedite the examination on the basis.       
2. TIPO will reference the guidelines of acceleration of patent, to establish the operation and specific types of accelerated examination and formulate relevant procedures for the applicant to refer.  

• Article 104
Any person who files an application for registration, renewal, accelerated examination, entry of change, opposition, invalidation, revocation and any other proceedings under this Act shall pay the required fees of filing, registration, accelerated examination, renewal, entry of change, opposition, invalidation and revocation.

[Explanation of Amendments]
In line with Amendment to Article 19, Paragraph 8, introducing provisions for applicants to request accelerated examination, and considering the use of administrative resources for such examination, the first clause introduces fees for accelerated examination to align with the principle of user payment.
 
However, it does not mean that there is no limitation on broadening the applications, the applications have to meet the requirements such as following, then they are in line with the demanded elements of acceleration of examination: 

1. There is an immediate necessity for obtaining the right;  
2. Stating facts and reasons; and 
3. Payment of accelerated examination fees.  

While the definition of 'immediate necessity for obtaining rights' lacks clarity in the text, the amendment explanation cites examples such as confirming rights due to infringement litigation or products already on the market as special needs., it still takes time to wait for TIPO to establish the operation and specific types and formulate relevant rules for the reference of the applicant. If referring to the requirements of accelerated patent fee as “the necessity for commercial implementation, or the examination operation is applicable to support the use of the Patent Prosecution Highway, or the invention filed relates to green energy (renewable energy) technology”. There is no examination operation for Trademark Prosecution Highway, but with the policies and goals of developing green energy being necessary for commercial implementation, thus, green energy-related trademark probably also conforms to the requirements of condition 1 said above and be able to request accelerated examination.      

It is crucial to note that in cases where there is no significant increase in the number of examiners, the accelerated examination system only prioritizes the applications who are willing to pay and to meet the requirements. It states euphemistically to the user to pay, but in fact, it displaces the examination of regular applications or fast track applications. After all, the administrative authority is non-business unit. How to avoid the new system becoming the situation of “you can jump in line if you have money”? It is necessary for TIPO to formulate the rules. According to the interview with the Director General Liao of TIPO [2], he said the accelerated examination fee  is estimated to be three times the original examination fee. It is expected to shorten the examination time to 2 months if all requirements and documents are in line with TIPO’s request.        

To sum up, there are only systems of regular applications and fast track applications currently in Taiwan. The accelerated examination has not yet taken effect, still waiting for TIPO to draft specific criterion and the implementation date published by Executive Yuan in Taiwan. While the fast-track application accelerates the receipt of the first office action by approximately 2 months compared to the regular application, to avoid the time cost and to reduce uncertain risk regarding trademark grant or refusal, applicants are advised not only to plan ahead for applications but also to ensure engagement with a qualified trademark agent at a trademark agency.  This includes conducting a trademark search in advance to know the existence of similar or related prior cases or trademarks that could lead to grounds for rejection, thus safeguarding their own rights effectively.