Abolishing the appeal proceedings and shifting the litigations from administrative to civil proceedings. Another significant change introduced into the draft amendment is the abolishment of appeal proceedings (at the Board of Appeals). If the applicant or the losing party is dissatisfied with a decision rendered by the Committee, he/she can no longer attend appeal proceedings at the Board of Appeals but should directly file a civil litigation with the IP and Commercial Court to seek judicial review of the decision. The court system for judicial review remains to be a two-instance system; however, the litigation will shift from administrative to civil proceedings. In invalidation/cancellation cases, the opposing party, not the TIPO, shall be named as the defendant in an invalidation/cancellation action. On this score, the two parties may directly participate in the oral hearings in the capacity of the plaintiff and the defendant and express their opinions in an exhaustive manner. In order to prevent invalidation/cancellation cases from dragging on for too long, the draft amendment provides that no new evidence or grounds can be filed in civil proceedings. Moreover, the losing party, if not satisfied with the Judgment rendered by the IP and Commercial Court, may further appeal the case to the Supreme Court.
Abolishing opposition procedures. “In addition, given that an opposition procedure is substantially the same as an invalidation procedure in terms of the function and objective thereof and that a third-party observation is allowed to be submitted during prosecution of a trademark application to rectify any examination loophole, the opposition procedure is to be abolished for the sake of judicial economy,” says Hung. “In the meantime, the limit on the qualification for filing an invalidation action based on absolute grounds of rejection is relaxed so that an invalidation action can be filed by any party for any reasons specified in the Trademark Act.”
“The streamlined remedial procedures associated with the rejection of trademark applications and invalidation/cancellation actions will become more efficient,” says Hung. “However, as the launch of the proposed “Committee for Review and Dispute Resolution” is unprecedented in Taiwan, we expect that it will take time for the Committee to operate fully and smoothly. In addition, with the abolishment of opposition procedures, a trademark owner may find it difficult to forestall third party filing for registration of the same or similar trademarks by way of, for example, watching any new trademark applications and filing third-party observations with the TIPO against conflicting trademarks at appropriate times.”
The future of this New Trademark Act in Taiwan is still bright, though.
“While this amendment substantially changes existing examination processes and invites a heated discussion, we are optimistic about the future of the New Trademark Act and believe it will produce the same desired effect as the current one,” says Hung.
Excel V. Dyquiangco
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