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Draft Revisions to Taiwan Trademark Act Enforcement Rules

by Mark McVicar

With the recent amendments to Taiwan’s Trademark Act set to enter into force on 1 July 2012, the Taiwan Intellectual Property Office (TIPO) is amending the Enforcement Rules that govern important practical details of how the TIPO administers trademarks. Mark McVicar and Gary Kuo participated in the recent hearings held by the TIPO to to discuss the amendments and solicit opinions from practioners.

Powers of Attorney

Currently, an original signed Power of Attorney is required to support actions at the TIPO. One Power of Attorney is sufficient for multiple administrative actions (applications, renewals, recordals, oppositions etc.) and is valid for a period of 5 years. Neither notarization nor legalization is required. The latest revisions to the Enforcement Act specify that a copy of a Power of Attorney is sufficient, unless otherwise requested by the trademark office. Therefore, a faxed or scanned copy of a Power of Attorney will be sufficient to support all actions at the trademark office. This will simplify filing considerably.

The TIPO is also considering whether to abolish the 5-year validity period.

Foreign Language Marks

The revisions to the Enforcement Rules specify that an application for a foreign language mark must specify the language of the mark and its meaning. Practitioners argued that this requirement will affect their ability to submit applications in a timely manner as it would be difficult to obtain the background and meaning of each mark prior to filing. Concern was also expressed that that if a specific meaning were indicated upon filing, the applicant could be estopped from claiming that the mark has another meaning at a later date.

Specifications in a Foreign Language

As noted above, all information submitted to the trademark office including the specification of goods and services for trademark application should be in Chinese.

However, in practice, the trademark office does allow the specification of goods or services to be submitted first in English, with the Chinese translation to follow within one month. Where there is a discrepancy between the foreign language specification and the Chinese translation, the original language will prevail. The draft revision of the Enforcement Rules codifies this change in practice.

At the hearing, there was some discussion as to whether the application date would be the date that the application is filed, or on the date that the Chinese specification is submitted. The Director General of the TIPO, Wang Mei-hua, voiced the opinion that at least a portion of the goods should be translated upon filing. The TIPO indicated that they would conduct further internal discussions regarding this matter.

In absence of an application for renewal by the trademark rights holder, an interested party may submit an application for the same:

The revised Enforcement Rules clarify that where a trademark rights holder fails to file for renewal of a registered mark, any interested parties (e.g. a creditor or pledgee) may also submit a renewal application along with an explanation of their rights in connection with the mark.

Termination Date Not Required when Recording a License

In Taiwan, only a trademark license recorded with the TIPO may be asserted against third parties. However, should the term of the license exceed be after the current term of trademark rights, the application to record the license must list the expiration date of the trademark(s) in question as the termination date of the license, and a new application to re-record the license must be filed upon renewal of the trademark(s). The revised Enforcement Rules remove the requirement to provide a termination date when applying to record a license, therefore eliminating the need to re-record a license upon renewal of the mark(s).

 

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