As of May 1, 2024, amendments to the Enforcement Rules of the Taiwan Trademark Act have come into effect. These amendments introduce a new accelerated review mechanism for trademark applications and allow for third-party observations during the trademark examination phase.

Below, we provide a detailed explanation of these significant changes:

1. Establishment of the Accelerated Review Mechanism for Trademark Applications

Under specific circumstances, trademark applications can now undergo an accelerated review process, enabling quicker acquisition of trademark rights. Since the implementation of the accelerated review mechanism on May 1, 2024, the first new application utilizing this process was registered by June 13, 2024. It only took 3 months for the subject application to get registered. 

In one notable case, the first application meeting all the conditions for accelerated review was originally filed on March 1, 2024. Due to a third party's request for licensing of the trademark, there was an urgent need to obtain the trademark registration promptly. The applicant applied for accelerated review on June 4, 2024, paid an accelerated review fee of NT$6,000 (approximately USD220), and submitted relevant documents such as the trademark licensing agreement etc. After confirming that there were no grounds for refusal under the Trademark Act, the approval notice was issued on June 13, 2024. 

Compared to the current average initial notification time of approximately 6.2 months and the average examination period of about 7.5 months, this process significantly reduces the waiting time for applicants, aiding their commercial planning and rights protection.

Conditions for Entering the Accelerated Review Process:

• All Goods or Services in Actual Use or Under Sufficient Preparation: The specified goods or services of the trademark application are already in use or have undergone substantial preparation.
• Partial Goods or Services in Actual Use or Under Sufficient Preparation with Urgency: Some of the specified goods or services are already in use or have undergone substantial preparation, with an urgent need for acquiring rights due to commercial necessity, such as: unauthorized use or preparation for use of the trademark by a third party; receipt of an infringement warning from a third party due to the use of the trademark, a third party's request for licensing of the trademark.

2. Introduction of Third-Party Opinion During the Trademark Examination Phase

The new regulations allow "any person" to submit opinions against a trademark application during the examination procedure if it violates grounds for refusal. The primary function of these opinions is to provide examination materials. The examiner will decide whether to adopt the content of the opinion without needing to respond to the third party. The applicant will only be notified to state their opinion if the observations are substantial enough to influence the examiner's decision against registration.

This is most commonly used when a foreign trademark is preemptively registered by a third party in Taiwan, allowing the foreign trademark owner to express their opinion without having to wait for the opposition period.

Examiner's Process:

• Upon receiving third-party opinions, the examiner will evaluate whether the content is specific and clear, and determine if it can serve as valid evidence.
• If the examiner does not forward the received materials to the applicant for their opinion, the third party’s opinion alone cannot be the sole basis for refusal.

Submitting third-party observations during the examination procedure can potentially reduce the need for opposition procedures and associated costs after trademark registration. This amendment aims to enhance the efficiency of trademark examinations. Proper utilization of the third-party opinion mechanism, by submitting relevant third-party opinions before a trademark is registered, can help saving both time and money.

This step could be executed in the past as well, but some examiners accepted it and considered it as a reference for whether to grant registrationw, while others refused to review it, believing that foreign trademark owners could assert their rights through opposition. However, currently, it takes about a year or more to obtain the registration for a trademark application. If foreign trademark owners can immediately express their opinions for the examiner's reference upon discovering that their trademark has been preemptively registered, their rights can be protected earlier, saving time and money.

Current Status and Assistance

Currently, there are still relatively few trademarks registered through the accelerated review process due to its stringent requirements. If your clients have related needs, please feel free to contact us. We are more than happy to assist you in navigating this new mechanism.

We hope this overview provides valuable insights into the new accelerated review system and third-party observation mechanism under Taiwan's Trademark Act. 

Should you have any questions or require further clarification, please do not hesitate to reach out to us.