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SCOPE OF TRADEMARKED GOODS OR OF PATENT CLAIMS MAY BE REDUCED DURING ADMINISTRATIVE LITIGATION
If an application for trademark registration has been rejected by the Intellectual Property Office (IPO) under Article 37 Item 15 of the Trademark Law, on the grounds that the mark in question is identical or similar to a mark already registered by another, and that some of the goods desig-nated for its use are identical or similar to those designated for the registered mark, may the ap-plicant reduce the scope of designated goods during an administrative appeal or administrative litigation? The Trademark Law contains no ex-plicit provisions on this matter, but the view taken in past practice has been that such a re-duction is not permissible.
However, the Taipei High Administrative Court in a recent judgment held that after an applica-tion has been filed for trademark registration but before its approval, a petition to reduce the scope of the goods designated for the use of the trademark is of the nature of a reduction in the scope of the original application, and as such is not contrary to the intent of Article 19 of the Trademark Law and Article 27 Paragraph 4 of the Trademark Law Enforcement Rules. Before the end of oral proceedings in the case before the court, the trademark applicant made a request to reduce the number of goods designated in the trademark application, and the court ruled to permit the reduction.
There have also been similar disputes in patent application cases. The Patent Law is silent on whether a patent applicant may apply to amend the claims during an administrative appeal or administrative litigation, but the view taken in past practice has always been that it is not al-lowed. However, the Taipei High Administra-tive Court held, in a recent judgment, that taking into consideration the meaning of Article 44 Paragraph 1 Item 3 of the Patent Law and its legislative intent, the applicant may amend the claims even after the original administrative de-cision.
The above rulings of the Taipei High Adminis-trative Court do not set any binding precedent for other cases, so its impact on IPO's practices re-mains to be seen.