Newsletter
Trademark Protection Strategies:
Trademark owners should put the accelerated trademark examination mechanism to good use
I. Introduction
Generally, it takes an average of six to eight months to complete the process of trademark application and registration with the Taiwan Intellectual Property Office (TIPO). With the annual increase of trademark applications in Taiwan, there is a limit to the pace at which the limited number of examiners can process the growing number of applications. Furthermore, as applicants occasionally operate on a tight schedule to market their goods or services, they may find it difficult to acquire timely protection for their trademarks and brands. In response to the developments of the industry and the public's need for trademark applications, TIPO introduced new regulations on "Accelerated Examination of Trademark Applications" in the amended and published Article 19-8 of the Trademark Act of 24 May 2023 as a basis for trademark authorities to conduct accelerated examination.
On 1 May 2024, the mechanism of accelerated examination became operational. TIPO soon issued the first approval for this type of application on 13 June 2024. In this particular case, accelerated examination was applied for on 4 June 2024 and the applied-for trademark was granted registration on 16 July 2024. With this mechanism in place, rights holders are encouraged to make good use of this tool when devising trademark strategies. In the following, we offer an introduction to the requirements and procedures of the accelerated examination system.
II. Application Requirements
Only trademark applications that meet certain requirements specified in the regulations can apply for accelerated examination.
Article 19-8 of the Trademark Act: "A trademark applicant seeking rights approval promptly may submit facts and reasons, along with the accelerated examination fee, to the Registrar Office to initiate the accelerated examination process. Such examination shall not apply to an application to which a notice of amendment or stating grounds for refusal has been issued by the Registrar Office." Accordingly, to file an accelerated examination application, the applicant must (1) have an immediate need to obtain trademark rights, (2) provide the facts and reasons for the application, and (3) pay the accelerated examination fee. Among these conditions, the most important one is the immediate need to obtain trademark rights.
In Article 19(2)-1 of the Enforcement Rules of the Trademark Act, there are two situations that constitute an immediate need to obtain trademark rights: (1) all of the goods or services designated for use by the applied-for trademark have been put to actual use or considerable preparations have been made for their use; and (2) some of the goods or services designated for use by the applied-for trademark have been put to actual use or considerable preparations have been made for their use, and there is a necessity and urgency in commerce for obtaining rights.
In Article 19(2)-2 of the Enforcement Rules of the Trademark Act, the definition of having a necessity and urgency for obtaining rights includes any of the following: (1) a third party has, without the applicant’s consent, used the applied-for trademark, or prepared to a certain degree to use such mark; (2) the applicant has received a cease and desist letter from a third party claiming infringement of its rights due to the applicant’s use of the applied-for trademark; (3) a third party requests the applicant to license the applied-for trademark; (4) the applicant has planned to launch the applied-for trademark and signed sales or distribution contracts with business partners; (5) the applicant has planned to feature the applied-for trademark at an exhibition and signed contracts with the organizer of the exhibition; and (6) any other circumstances sufficiently showing that there is a necessity and urgency in commerce to obtain rights.
III. Application Procedure
The applicant who wishes to apply for accelerated examination must meet the foregoing requirements and, after filing the trademark application and before TIPO issues the first examination notice, submit facts and evidence corresponding to the type of justification stated under different application numbers and separately file them for accelerated examination. TIPO will register them once the applicant has paid the accelerated examination fee.
If the submitted application is incomplete, TIPO will issue a notice of correction within ten (10) working days of receiving electronic filing, or within fifteen (15) days of receiving paper filing. If the application meets the requirements for accelerated examination, TIPO will generally issue the first examination notice (e.g. approval, notice of procedural correction, or advance notice of the reasons for disapproval) within two (2) months after TIPO registers the case. After the applicant submits corrections or responses, TIPO will issue its decision within fifteen (15) working days of receiving the corrections or response, provided that the case does not require additional corrections. However, even if the conditions for accelerated examination have been met, TIPO has stated that it may be unable to quickly reach a decision in the following situations:
(1) The specifications of the designated goods or services are too broad or imprecise and do not correspond to the goods or services that are actually put to use or are prepared to a certain degree to be used.
(2) The applied-for trademark is non-traditional, being a three-dimensional, color, scent, sound, or repeating-pattern trademark, thus requiring submissions of materials showing the trademark's distinctiveness.
(3) The trademark is involved in a dispute, meaning that TIPO would have to await the outcome thereof before issuing a decision based on the same.
IV. Conclusion
The accelerated examination system enables trademark applicants who must quickly obtain trademark rights to obtain them without having to wait for six months or more. This mechanism boosts examination efficiency and satisfies application needs in that it prioritizes applications with greater urgency and necessity. Going forward, we can expect applicants to make good use of the system. Specifically, applicants may opt for accelerated examination for trademarks with an urgent brand launch schedule and for other urgent cases, enabling applicants to obtain trademark protection within a shorter time frame.