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TIPO announces directions on third-party opinions regarding trademark applications

by Jesimy Yu and Peter Lavelle

The Taiwan Intellectual Property Office (TIPO) has released “Operational Directions on Trademark Applications Submitted by Third Parties”, which allow third parties to provide written opinions to the TIPO regarding pending trademark applications. The TIPO hopes that this will lead to more objective decisions. The Directions are effective as of 20 June 2019.

According to the Directions, a third party must submit its opinion to the TIPO in hard copy form, and they may do so anonymously. If evidence or opinions provided are not submitted as hard copies, or are submitted on compact disc or in the form of computer records, such material may not be referred to by the TIPO during their examinations.

The third party’s opinion should also indicate the grounds on why the trademark shouldn’t be registered and should include related evidence. For example:

1. Where the mark lacks distinctiveness: the third party should provide an explanation of how the industry uses words, pictures, or symbols, which are similar to the mark in question, and submit evidence related to their opinions.

2. Where the mark is identical or similar to another person’s already filed trademark: the third party must submit objective, publicly credible evidence, and:

(a) Evidence of use must demonstrate that the earlier mark is in use for marketing purposes ;

(b) Evidence of use of the earlier mark must indicate the date and the user of the mark, and must conform to standard commercial practices;

(c) Newspaper and magazine materials are acceptable, but they must contain complete information, including the source, volume/issue, date of publication, and page number(s).

(d) Online material is acceptable, but accuracy and objectivity of such information should be cautiously employed.

3. Where the applicant has the intent to counterfeit or imitate the other person’s marks: the third party must provide evidence that the applicant has an existing contractual, regional, transactional, or other material relationship with the owner of the earlier mark that is allegedly being imitated. Such evidence could include the following:

(a) Correspondence, transaction documents, or purchase information showing a relationship between the applicant and the owner of the earlier mark;

(b) Documentary evidence showing a dependent or contractual relationship between the applicant and the owner of the earlier mark;

(c) Evidence showing that the place of business of the applicant is in close proximity to the place of business of the earlier mark’s owner;

(d) Evidence showing that the applicant was once a shareholder, representative, manager, or employee of the earlier mark’s owner, or vice versa; or

(e) Other evidence proving that the applicant was aware of the existence of the earlier mark. If they were aware, this could be covered by the blanket provision regarding “other relationships”. Where the applicant is a competitor of the earlier mark’s owner, evidence may be submitted to the examiner showing the time period, region, and scope of actual use of the trademark, as well as the accumulated goodwill of the earlier mark’s owner.

4. Where the mark is identical or similar to a well-known mark: a third party may refer to the “Examination Guidelines for the Protection of Well-known Trademarks” to determine what kind of evidence should be submitted.

5. The mark in issue involves infringement of another party’s copyrights, patent rights, or other rights: When arguing infringement of this kind, a third party should submit documentary evidence of a final civil judgment, or documents showing that a complaint citing the applicant’s infringement has been lodged with a court of relevant jurisdiction. If no final judgment has been handed down, the trademark application may be suspended pending the issuance of such judgment.

6. Other objective, concrete evidence showing that the disputed application should be denied registration according to the Trademark Act.

After the TIPO receives a third-party opinion, they may request that the applicant provide a response. However, if the examiner does not notify the applicant of a third-party opinion, that opinion cannot be used as basis for rejection.

Lastly, as third parties are not parties to the trademark application, the TIPO will not notify the third party about their opinions, nor notify them of any decisions. If a third party disagrees with the TIPO’s decision on a given application, they may file a separate opposition or invalidation action against the trademark in issue.

The Directions can be found on the TIPO’s website (in Chinese) here.

For more information on trademark matters in Taiwan, please contact Peter Dernbach at pdernbach@winklerpartners.com and Jesimy Yu at jesimy@winklerpartners.com.

 

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