Taiwan IP Updates

 By Lyndon 

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Taiwan Adjusts Designated Names List

The Taiwan Intellectual Property Office (TIPO) has updated its list of Designated Names of Goods and Services for Trademark Registration.  Effective from January 2021, the changes include the addition of 85 items and the deletion of 27 items.  A further 26 class/subclass names were added, removed or amended and these alterations have been made on the electronic trademark application system.  The changes have been made in response to the recent revision of the Nice Classification system.

Consultation Service for Taiwan SMEs Set Up

TIPO has recently organized a new service for small and medium-sized enterprises in order to help them apply for patents in other countries.  TIPO is acting on the perception that some SMEs are undervaluing their intellectual property or lacking in experience about how to apply for patents.  This measure means SMEs can organize an appointment with the relevant experts in TIPO to have consultations about how to develop a robust patent portfolio and all the steps to make that happen.  The intention is that SMEs will be able to have a stronger presence in the global marketplace as a result.

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Taiwan Patent Act Draft Amendments

TIPO has recently announced draft amendments to some articles of the Patent Act and the Trademark Act.  The revisions are aimed at streamlining some mechanisms of the dispute resolution and appeal process and are the most notable changes to the Patent Act in years.  Firstly, under the current system, whenever there is a dispute over the ownership of a patent application or patent right, a cancellation action is taken.  Now, parties will have to pursue civil litigation in the court.  TIPO will set up a Patent and Trademark Trial and Appeal Board whose members will use such measures as direct trial, oral argument and preparatory proceedings.  This amendment will replace the current re-examination procedure by allowing the aggrieved party to appeal to the Review Committee.   Also, when a party disagrees with the result of a review decision by the Review Committee of the TIPO, they can file a lawsuit with the Intellectual Property and Commercial Court.  The TIPO have held several public hearings recently, so there may be further changes to the Patent Law before it is finalized.

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Proposed Changes to Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark Holders

The guidelines for Customs to follow in implementing border protection measures with respect to trademark rights in Taiwan stipulate that the owner of the trademark or their agent must identify the items in person within 24 hours.  However, for a variety of obvious reasons that proved burdensome for many trademark owners.  In 2016, an amendment was made to allow the trademark owner to ask Customs to provide photo files of suspected infringing goods to assist in deciding whether an on-site visit for verification purposes was necessary or not.  There still remains the issue of the 24 hour deadline, and it is believed that an adjustment will be made to whether on-site inspection will be necessary and the timeline before the new rules are finalized.

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