On December 16, 2010 the Executive Yuan gave its stamp of approval to a draft revision of the Trademark Act designed to meet the needs of business development, strengthen the trademark examination mechanism, reinforce the protection of trademark rights, and bring Taiwan into conformity with international practice. In addition to expanding the scope of trademark protection and beefing up protection for well known trademarks, the revision will also add border control measures to strengthen the protection of intellectual property rights.
Jane-Jane Liu, deputy director of the Trademark Division of the Taiwan Intellectual Property Office (TIPO), an agency of the Ministry of Economic Affairs, explains that, in reference to the Singapore Treaty on the Law of Trademarks, the revision will expand the definition of “trademark” to encompass all types of distinctive marks, including such non-traditional marks as motion marks and holograms. All marks that consumers can use to differentiate the source of products or services will be taken under the protection of the Trademark Act. The revision will also strengthen protection for owners of well-known trademarks by providing that a trademark owner who feels that someone else is using a trademark similar to the owner’s trademark, so that confusion among consumers might result, may file a claim for rights without submitting proof of damage. At the same time, the revision will forbid the use of words contained in a well-known trademark owned by someone else in one’s own company name, trade name, or domain name.
To conform to rules regarding the right of trademark priority that are current in the international community, TIPO referred to the “convention priority right” in Article 11 of the Paris Convention for the Protection of Industrial Property and added a provision to the effect that for goods exhibited in international exhibitions organized or recognized by the government, trademark applications submitted within six months of the date of exhibition will be dated at the date of exhibition.
Ms Liu points out that the revision will reinforce inspection at the source, assuring a legal basis for the confiscation of infringing goods by Customs enforcing border controls. At the same time, it will facilitate inspection and identification, and the bringing of charges against infringers, by allowing trademark owners to ask Customs for such information as the importer and exporter of confiscated goods, the sender and recipient, and the quantity of the goods. In the future, whenever a trademark dispute arises and a party to the dispute applies to the agency in charge of trademarks for a determination, a judgment will be made as to whether the trademark has actually been used in the market The applicant for a determination, therefore, should submit proof of the use of the relevant goods or services in the three years period prior to the application.