An Introduction to the Revision of Enforcement Rules on the Trademark Act

1. An Introduction to the Revision of Enforcement Rules on the Trademark Act Intellectual Property Office Chinese Taipei May 2012

2. Key Information onthe Revised Enforcement Rules • Comprehensive amendment • Be in force on July 1, 2012 ( same day the revised Trademark Act enter into force)

3. Important Amendments- Two Aspects • Providing convenient measures to customers • Non-traditional trademark

4. Convenient Measures • Documentary evidence submitted may be copies of the original, except the certified copy of previous application in support of the declaration of priority • Power of attorney, letter of consent, license contract, legal person certificate of a collective trademark applicant, etc. may be copies • Applicants and the parties in trademark cases may keep the original documents if they wish to

5. Convenient Measures • Extending the time period for an applicant with no domicile or business establishment within our territory to submit his observations before the application is refused on substantive grounds • Foreign applicants • 2 + 2 months • (Also applies to nationals with no domicile or business establishment within our territory) • Exception: with domicile or business establishment within our territory • 1 + 1 month

6. Convenient Measures • Removing the provisions on time period of a license or pledge to be specified in the recordal application, and the time period is no longer confined within the duration of the registration • The actual time period of a license will be reflected in the recordal • The order of the license or pledge will not be affected after the trademark is renewed

7. Convenient Measures • Multiple requests for transfer, license or sublicense of recordal may be submitted in one application • Though the fee will not be reduced by submitting one application, it is convenient to do so

8. Convenient Measures • The person who has an interest in the existence of a trademark right may file the renewal application with his interest described • The basis for a third party’s request for trademark renewal is provided in the Enforcement Rules

9. Convenient Measures • A trademark owner who would like to have a new certificate of registration may request that a copy be issued • The assignee and the trademark owner who has his name changed may request for issuing a new certificate to reflect the changes

10. Non-traditional trademarks • A graphical representation ( the reproduction) is the requirement for having the filing date accorded • When the reproduction is not the actual form used in relation to goods/services, a description or even a specimen will be needed The general representation requirements of non-traditional trademarks

11. Non-traditional trademarks • Providing the representation requirements for motion and hologram trademarks

12. Non-traditional trademarks • Trademark consisting of a non-visible sign such as scent or touch mark may be eligible for trademark registration • Distinctiveness • Formality requirements: • Graphical representation: could be a precise verbal description of the mark • An actual sample may be required • If the mark can be defined clearly and unambiguously, and the mark is distinctive in relation to goods/service, it will be entitled to trademark registration.

13. Thank youfor your attention!