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DOES THE NEW TRADEMARK ACT GOVERN DISPUTES OVER PREVIOUS APPLICATIONS?
The amended Trademark Act, which took effect on 28 November 2003, is silent as to whether trademark registration applications filed before that date but pending at the proceedings of an administrative appeal or administrative litigation following rejection by the IPO, should be han-dled according to the provisions of the current Act, or of the old Act. This has led to consid-erable differences of opinion in practice, and even the rulings of the Supreme Administrative Court have not been consistent on this point.
In a 2002 judgment, the Taipei High Adminis-trative Court, citing a 1968 judgment of the Su-preme Administrative Court and relevant doc-trines of administrative law, stated that suits for fulfillment of obligations and suits for perform-ance, as newly provided for by the Code of Administrative Procedure, should be judged on the basis of the legal and factual situation pre-vailing at the conclusion of the final oral hearing in the trial court. The court defined the trade-mark registration case in question as a suit for fulfillment of obligations, and on that basis stated that as the Trademark Act applicable to the case had changed by the end of oral hearings, the provisions of the amended Act should apply.
Because the Supreme Administrative Court considers only points of law, and does not make determinations of facts, one might infer from the above judgment of the Taipei High Administra-tive Court that if a trademark registration case or a similar case involving a suit for fulfillment of obligations was already before the Supreme Administrative Court at the time when the Trademark Act was amended, the new Act should not apply to the case.
However, it is highly noteworthy that in a 2004 judgment, the Supreme Administrative Court, citing its own judgments from 1960 and 1971, held that the trademark registration case in question was a suit for revocation (not a suit for fulfillment of obligations). Thus, the task of the administrative court was to determine whether the disputed administrative decision was prop-erly based on the law in force at the time when the decision was announced. Changes in the law occurring after an administrative decision was announced were not matters that the agency making the decision could have taken into con-sideration when arriving at its decision, and hence the original decision naturally could not be held to be unlawful because of a subsequent change in the law. Therefore, in a suit for revo-cation, the reference time point for determining whether an administrative decision was lawful, was the time at which the original decision was announced.
The question of whether trademark opposition, invalidation, and revocation cases should by their nature be defined as suits for fulfillment of obligations or as suits for revocation—a question that bears upon how cases should be handled if there is a change in the law or facts after an ad-ministrative decision is rendered—is also a highly controversial issue in practice.