In order to cover shortage of information during the trademark examination, enable examiners to investigate the evidence ex officio, avoid applications filed in bad faith and enhance the validity of trademark registrations, Taiwan Intellectual Property Office (TIPO) prescribed “Guidelines for third-party observations on trademark applications for registration“, which have been announced to implement on June 20, 2019.
Key points of “Guidelines for third-party observations on trademark applications for registration” are briefly introduced below:
1. Any third party other than the applicant can submit an observation which is not necessary to bear the name of the third party.
2. The third-party observation shall be submitted before a disposition is rendered. The observation shall be left unattended to when it is submitted after the application is withdrawn, inadmissible or has received the disposition of approval or refusal.
3. The third party may submit the observation together with evidence as proof claiming that a trademark shall not be registered because one or more circumstances under Paragraph 1 or 3 of Article 29, Paragraph 1 or 4 of Article 30, or Paragraph 3 of Article 65 on which the trademark is not registrable exist.
4. The third-party observation shall be submitted in written form. If it is submitted by facsimile, “the third-party observation” and “the application number” shall be indicated in the written form to enable TIPO to correctly assign and deal with it. Examiners may not adopt the third-party observation and relevant proof as reference materials for examination of trademark applications if they are not submitted in written form or are submitted in form of compact disks or digital data.
5. After submitting the third-party observation, the third party may supplement additional observations and proof before the disposition of approval or refusal is rendered.
6. When submitting the observation on the trademark application, the third party may attach proof according to the following circumstances respectively:
(1) Having no distinctiveness:
When claiming a trademark lacking distinctiveness in the third-party observation, the third party shall describe how competitors in the same trade use relevant word, device or symbol, and attach supporting proof, such as objective factors and evidence about the relation between the trademark and the designated goods or services, the use by competitors in the same trade, the approach by which the applicant uses the trademark, and the actual trading situations.
(2) Being identical with or similar to another person’s earlier used trademark:
When attaching evidence of use of another person’s trademark, such evidence shall be objectively accountable and the following matters shall be paid attention to:
(i) Displaying the trademark on the evidence of use which shall meet the definition of trademark use in Article 5 of Trademark Act;
(ii) Displaying the date and user on the evidence of use which shall comply with general practice in the trade;
(iii) Regarding newspapers or magazines, there shall be complete information about the source, volume, date of publication and page number, etc.
(iv) For evidence of use on websites, its accuracy and objectivity shall be prudently considered.
(3) Having intent to imitate an earlier used trademark;
When claiming a trademark is filed in bad faith in the third-party observation, the third party shall submit objective evidence proving that the applicant has contractual, regional, or business connections or any other relationship with the proprietor of the earlier used trademark as follows:
(i) Correspondence, transaction documents or purchasing data between the applicant and the proprietor of the earlier used trademark;
(ii) Documents showing the relationship or contractual relationship between the applicant and the proprietor of the earlier used trademark;
(iii) Documents showing the applicant’s business located in the same or nearby streets with the proprietor of the earlier used trademark;
(iv) Documents showing the investment relationship between the applicant and the proprietor of the earlier used trademark and the applicant once being the shareholder, representative, manager, employee of the proprietor of the earlier used trademark, etc.;
(v) Other evidence showing the applicant being aware of the existence of the earlier used trademark;
The applicant may be aware of the existence of the earlier used trademark due to business relationship or other relationship. If the third party claims that the applicant and the proprietor of the earlier used trademark are competitors in the same trade, he/she shall submit objective facts and evidence showing how the proprietor of the earlier used trademark actually uses the trademark in the market, including the period, area and scope, as well as that its mark has accumulated certain reputation for the examiner’s comprehensive consideration.
(4) Being identical with or similar to another person’s well-known trademark or mark:
When claiming a trademark is identical with or similar to another person’s well-known trademark or mark in the third-party observation, the third party shall submit evidence which can sufficiently prove that another person’s trademark has been well-known.
(5) An infringement of another person’s copyright, patent right, or any other right
When claiming a trademark infringes another person’s copyright, patent right, or any other right in the third-party observation, the third party shall submit a certificate to the effect that the civil judgment has become final and binding, or the documentary evidence showing that an infringement litigation has been initiated with a competent court. When the litigation is pending at the court but no final judgment has yet been rendered and where the status is confirmed as factual by the examiner in charge of the trademark at issue, the examination of the trademark application may be suspended until there is a final judgment of the infringement litigation.
(6) Other objectively concrete facts and evidence which are sufficient to prove the trademark application violates any grounds for refusal of registration stipulated in Trademark Act.
7. The examiner shall review the third-party observation and determine whether the content given is concretely specified as well as whether the objective facts and evidence are sufficient to prove that the trademark application violates any grounds for refusal of registration. If the examiner fails to inform the applicant of the cited reference for him/her to submit opinions on the intended refusal, such cited reference cannot be adopted as grounds to make the disposition of refusal.
8. No matter whether the third-party observation is considered or not, the examiner does not have to inform the third party nor have to inform the third party of the disposition of the trademark application, for the third party is not the concerned party in the trademark prosecution.
9. If the third party is not satisfied with the disposition for the approval of the trademark application, he/she shall express his/her opinions by filing an opposition or invalidation application.
10. The guidelines in relation to a trademark shall apply mutatis mutandis to a certification mark, collective membership mark and collective trademark.
Source: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES
