Taiwan’s Enforcement Rules of the Trademark Act were implemented on May 1, 2024, coinciding with the new Trademark Act coming into effect. A point that a trademark applicant should pay attention to is the revision of Article 12-1.

Paragraph 3 of Article 19 of the new Taiwan Trademark Act stipulates that “The applicant referred to in Paragraph 1 can be an individual, juridical person, partnership, legally established group without juridical personality, or a business registered under the Business Registration Act intending to engage in business with regard to designated goods or services.”

What is “intending to engage in business with regard to designated goods or services”? It is interpreted in this amendment Article 12-1 of Enforcement Rules of the Trademark Act:

“The term ‘intending to engage in business with regard to designated goods or services’ as prescribed in Paragraph 3 of Article 19 of the Act refers to the intention

to genuinely use the trademark on designated goods or services. 

When examining under the preceding paragraph, the Registrar Office may require the applicant to submit relevant evidence with the explanation if necessary.”

The legislative rationale of Article 12-1 demonstrates that:

1. Although applying for trademark registration under this Act does not presuppose actual use in the market, a trademark registration application without the intention of use will affect the authenticity of the registration publication information and the normal development of the industry. In particular, if an applicant obtaining the trademark is to exclude others from entering the market or to obstruct fair competition, which is not the purpose of registration protection under this Act. Thus, Paragraph 1 stipulates that the connotation of "intending to engage in business with regard to designated goods or services" mentioned in Paragraph 3 of Article 19 of this Act refers to “the intention to genuinely use the trademark on designated goods or services”.

2. The applicants should file the trademark application within the scope of the business in which they intend to engage for designated goods or services. If the examiners suspect the applicant's genuine use intention for the application based on objective information, they may conduct verification ex officio. Paragraph 2 stipulates that the examiners may notify the applicant to submit relevant evidence with an explanation if necessary.

3. Whether the applicant intends to use the trademark can be determined by assessing the objective circumstances of the case. For instance, if the scope of the designated goods or services is overly broad, if the applicant is an individual but has designated franchised services such as telecommunications transmission or financial banking, or if an applicant files a significant number of trademark applications within a short timeframe but fails to pay the official fees.

In the past, many trademark applicants used to file trademark applications across substantial classes, sometimes even covering all 45 classes. This strategy was often employed by well-known trademark owners to prevent third-party squatting. However, is it still possible to file such defensive applications following the implementation of the new Enforcement Rules of the Trademark Act? We should closely monitor TIPO's examination practices in the future.