Based on an announcement published by the Taiwan Intellectual Property Office (TIPO), the time frame from filing to receiving the initial examination report for a new trademark application is currently eight months. In this regard, for applicants that are eager to obtain approval and registration promptly, the amendments to the Taiwan Trademark Act published on May 24, 2023, wherein newly added Article 19-VIII serves as the legal basis for accelerated examination for new trademark applications in Taiwan, should be most welcome news.
Specifically, Article 19-VIII of the Trademark Act stipulates, “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.”1 Provided that the required fee as well as reasons are submitted, an applicant in need of prompt approval and registration for his new trademark application may request for accelerated examination before the initial examination report is issued.
Accelerated examination is officially introduced to promote industrial development, and applicants seeking to obtain approval for registrations promptly, for example to affirm rights when being involved in an infringement matter or launching products, are eligible to benefit from accelerated examination. When filing a request for accelerated examination, applicants have to submit facts and reasons, together with relevant proof. Basically, the goods or services should already be put into use or be close to market launch. Hence, evidence of use or evidence showing that goods or services are ready to be released to the marketplace should be a part of proof in support of the request for accelerated examination.
According to the outline of the accelerated examination procedure drafted by the TIPO, separate requests for accelerated examination should be filed for each individual new trademark application. That is, a request for accelerated examination is not extended to all pending new trademark applications of the applicant. On the other hand, if the designated goods or services of a single new trademark application are not all eligible for accelerated examination, division of the new trademark application or deletion of ineligible goods or services should be made in advance.
However, the request for accelerated examination comes at a price. The TIPO has proposed an accelerated examination fee of NT$6,000 per class. Compared to the basic fee of NT$3,000 per class for a new trademark application, the accelerated examination fee is doubled. It should also be noted that if the accelerated examination fee is not paid, the request for accelerated examination will be deemed as not having been made. Moreover, if the TIPO concludes that the requirements for accelerated examination are not satisfied, there would be no refund for the accelerated examination fee.
If the accelerated examination fee is paid but the TIPO finds that further documents are needed to support the request for accelerated examination, the TIPO would notify the applicant within 10 to 15 working days to make supplemental submission. If the supplemental submission is not made within the time frame prescribed by the TIPO, the request for accelerated examination would be dismissed. If all the required documents for accelerated examination are presented, the TIPO would begin examination of the new trademark application on an accelerated basis. However, the TIPO does not plan to issue any notice about commencement of accelerated examination but will only add a remark to the status of the new trademark application as shown in the TIPO’s public database.
Ideally, for a new trademark application under accelerated examination, the initial examination report is expected within two months. Nevertheless, for complicated cases, extra examination time might be needed. Once a Notice of Approval is issued, the applicant may simply pay the registration fee and then await receipt of the Certificate of Registration. In the event where an Official Action or a Preliminary Objection is issued, if the applicant has addressed the issue and the TIPO has no other questions, a decision to approve or refuse registration would be rendered within 15 working days.
As accelerated examination aims to significantly shorten the examination time, it is not advisable to request accelerated examination for new trademark applications designating goods or services that are too broad or vague to be accepted or unable to be associated with the goods or services as shown in the proof submitted in support of the request for accelerated examination. For new applications involving three-dimensional, color, sound, scent, motion or any other non-traditional trademarks, for which special formality requirements and evidence proving acquired distinctiveness through use are usually required, accelerated examination is unlikely to be helpful. In addition, examination of a new trademark application occasionally needs to be put on hold depending on whether registration of an earlier trademark will be canceled in an ongoing contentious proceeding.
The following is a summarized overview of accelerated examination for new trademark applications in Taiwan:
- A separate request for accelerated examination should be made. The request for accelerated examination may be filed at the same time when the new trademark application is filed or before the initial examination report for the new trademark application is issued.
- The accelerated examination fee must be paid when making the accelerated examination request.
- Submission of reasons for seeking rights approval promptly together with supporting documents and proof is also required.
- If accelerated examination is granted for a new trademark application, the initial examination report would be issued as early as within two months. In the event that the TIPO’s initial examination report raises questions about the descriptions of goods or services or registrability of the trademark, once the applicant makes relevant submissions to address the outstanding issues, a formal decision for the new trademark application should be made within 15 working days.
- Accelerated examination is not suitable for new trademark applications that require extra time for examination of descriptions of goods or services or substantial additional documents.
On a separate note, accelerated examination is different from the existing “fast-track” mechanism. Under current local practices, if certain requirements are met (one of which is that all the designated goods or services are standard, acceptable descriptions), the “fast-track” mechanism is automatically triggered and there is no need to file any request or pay any fee. The time frame for a new trademark application under the “fast-track” mechanism would be shortened by one to two months only.
To sum up, accelerated examination is intended to help applicants in need of seeking rights approval promptly and should work best for simple, standard, and straightforward new trademark applications. If all the requirements for accelerated examination are met, and assuming no questions or objections are raised by the TIPO during examination, a new trademark application may possibly be approved within two months and then proceed to registration within another one to two months. The new accelerated examination program will save a considerable amount of time in the registration process once the relevant procedure has matured and the implementation date is set.
*Assistant Manager of Trademark Division at Tai E International Patent & Law Office
1 Please refer to the Trademark Act published at the Laws & Regulations Database https://law.moj.gov.tw/ENG/LawClass/LawAll.aspx?pcode=J0070001.
