Accelerated Trademark Examination Procedures Enacted

To implement the trademark accelerated examination procedures mechanism stipulated in the new Taiwan Trademark Act, the Taiwan Intellectual Property Office (TIPO) promulgated Accelerated Examination Procedures for Trademark Registration Applications. They took effect on May 1, 2024. Key points include the following:

Necessary to Immediately Obtain Trademark Rights

Only “necessary to immediately obtain trademark rights” is applicable. Accelerated examination procedures only apply to those “necessary to immediately obtain trademark rights,” that is, the necessity and urgency of claiming commercial rights in a specific case should exist.

There are two types of applications that are considered necessary to immediately obtain trademark rights:

Type 1: All the goods or services identified in the trademark application have been used in Taiwan, or, to a considerable extent, prepared for use; and

Type 2: A part or parts of the goods or services identified in the trademark application have been used in Taiwan, or prepared for use to a considerable extent, by which exists the necessity and urgency of claiming commercial rights.

Commercial Necessity and Urgency

Under any of the following circumstances, the applicant may be deemed to have commercial necessity and urgency:

1. A third person uses the applied trademark without consent or is preparing for use to a

considerable extent;

2. The applicant receives a warning letter from a third party;

3. A third party requests a license;

4. The applicant has plans to put the applied-for trademark on the market, and there are relevant sales or distribution contracts with cooperative manufacturers;

5. The applied trademark has planned to participate in the exhibition and has entered into relevant contracts with the exhibitors; or

6. Other situations that can prove commercial necessity and urgency.

Fees

Additional official fees of NTD 6,000 should be paid. The official fees of NTD 6,000 are nonrefundable even if TIPO decides it does not apply to accelerated examination procedures.

Official Notice

The first official notice will be issued within two months. If the supporting requirements for accelerated examination are complete, the trademark registration application will enter into case examination directly and the first notice will be issued within two months. A decision will be issued by TIPO principally within 15 working days after the applicant’s response is served.

In general applications, the first official notice is issued within approximately six months after the filing date. The accelerated examination procedures indeed shorten examination time, which may satisfy the applicant’s urgent demands.

This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).

The complete PDF file of this article, published on INTA's website, is available at the following link.

Accelerated Trademark Examination Procedures Enacted.pdf

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