Amendment to the Trademark Act

06/30/2011

---

Since Taiwan's Trademark Act (hereinafter "Act") was first promulgated on 6 May 1930 and implemented as of 1 January 1931, it has been amended twelve times. The most recent amendment was made on 25 August 2010. In order to activate business development, harmonize the Trademark Act with international rules and adapt to the vigorous and diverse trade patterns of today's business, the Intellectual Property Office of the Ministry of Economic Affairs in Taiwan proposed the Amendment to the Trademark Act. The Amendment has been passed by the Legislative Yuan and was promulgated by the Presidential Office on 29 June 2011. The new Act shall come into effect upon the date designated by the Executive Yuan, which is expected in the first half of 2012. The main points of the Amendment are as follows:
1.	Scope of Protectable Trademarks is Extended
	Any sign that is distinctive enough to identify the source of goods or services and to distinguish these goods or services from those offered by others can be filed for registration as trademark. In addition to 3D device, single color, color combination and sound, the non-conventional marks that are protectable under the current Act, the Amendment further extends protection to motion marks and hologram marks.
2.	Modes of Trademark Use are Specified
	The various modes of trademark use are clearly specified by referencing international laws. In addition to conventional ways of using a trademark on the goods and services or descriptive literatures thereof, the same use by digital audio-visual means, electronic media, on the Internet, or through other media is also clearly defined as trademark use.
3.	Priority Rights based on Exhibition is Available
	In accordance with Article 2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the provisions of Article 11 of the Paris Convention with regard to exhibition priority rights are incorporated into the Amendment.
4.	Installment Payment for Registration Fee is Abolished
	The Amendment abolishes two-installment payment system for registration fee so as to avoid the risk of losing trademark rights due to neglect of making the second payment.
5.	Reinstatement of Registration is Available after Failure to Pay Registration Fee in time
	According to the Amendment, if an applicant does not willfully delay in payment of registration fee, the registration of trademark may still be effected after the applicant pays twice the registration fee within six months after the deadline, unless such reinstatement of rights interferes with the trademark rights obtained by others during the six-month grace period, in which case the reinstatement of rights shall not be allowed.
6.	Waiver of Citation by Letter of Consent may not Work in Some Cases
	Under the current Act, a letter of consent from the prior rights holder can waive the citation of conflicting prior rights, except in cases where the trademarks and the goods or services in conflict are identical. The Amendment adds a proviso to the effect that such consent shall not waive the citation if there is obvious impropriety.
7.	Proof of Trademark Use is Required to Cancel Registration of Others
	Where an invalidation or revocation action is filed on the basis of a prior trademark registration pursuant to Articles 30-1(10) and 63-1(1) of the new Act, in which the prior trademark has been registered for three years or more, supporting evidence should be submitted to show use of the prior trademark registration.
8.	New Provisions Regarding Trademark Infringement
	(1)	To coordinate inconsistent viewpoints in juridical practice, the Amendment clearly specifies that damage claim can only be made when the infringer has a subjective intent to commit the infringement act, either intentionally or negligently.
	(2)	To strengthen the protection of well-known trademarks, the Amendment clearly specifies that an act is deemed to be trademark infringement if there is "likelihood of dilution" of the distinctiveness or reputation of a well-known trademark, comparing to the "actual dilution" requirement under the current Act.
	(3)	In addition to direct infringement acts, such as use of infringing mark on the goods for sales in the marketplace, the Amendment further defines the auxiliary acts, such as the manufacture, import or export of labels, tags, packaging bearing the infringing trademark, as trademark infringement.
	(4)	The Amendment abolishes the minimum statutory compensation, i.e. 500 times the unit retail price of the infringing goods so that the court may have its discretion based on each case scenario. Additionally, in order to release the trademark right holder from the burden of proof in making the claim of damages, an amount corresponding to trademark license royalty may be used as the basis of damage claim.
	(5)	The Amendment defines the act of knowingly display or sales of infringing products through electronic media or internet as trademark infringement, which may be subject to criminal liabilities.
9.	New Provisions Regarding Border Control Measures
	To perfect relevant measures for the enforcement of border control, the Amendment clearly provides a legal basis for the Customs to detain goods and authorizes the Customs to provide the right holder with relevant information about the infringing goods for investigation of the infringement or initiation of lawsuits. Under the Amendment, by providing bond, the trademark right holder may ask for samples of the detained goods for evaluation of infringement off-site.
10.	New Provisions Regarding Certification Mark and Collective Trademark
	The Amendment revises the definition of certification mark and adds provisions regarding geographical certification mark and geographical collective mark. The Amendment also adds a penalty clause applicable to infringement of certification mark.
Please feel free to contact us for any information or assistance you may require. Sincerely yours, LEE AND LI