Fast-Track Trademark Examination Program Implemented on a Permanent Basis in Taiwan
Steve Y.T. Huang, Five Continents International Patent & Trademark Office (Taiwan)
The Taiwan Intellectual Property Office (TIPO) launched the “Fast-Track” Trademark Examination Pilot Program on May 1, 2020 to expedite the examination for applications filed through the electronic filing system. Over the past year, approximately 60% of the total trademark applications in Taiwan were filed under the program. The TIPO has made the program permanent as of May 1, 2021.
The Taiwan Intellectual Property Office (TIPO) launched the “Fast-Track” Trademark Examination Pilot Program on May 1, 2020 to expedite the examination for applications filed through the electronic filing system. Over the past year, approximately 60% of the total trademark applications in Taiwan were filed under the program. In light of the demonstrated efficiency, the TIPO decided to make the program permanent as of May 1, 2021.
There have been more than 100,000 trademark applications in each of the past five years. The “Fast-Track” Trademark Examination Pilot Program was launched by the TIPO to save the examiners’ time spent on dealing with procedural issues, by encouraging the trademark applicants to get all documents and official fee prepared at the time of filing. By fulfilling the procedural requirements, the trademark applicants are rewarded with the examination result earlier without the need to pay addition official fees, which serves as the incentive, leading to a win-win situation.
To qualify as a “Fast-Track” trademark application, the application must meet all of the following requirements:
I. Filed through the trademark electronic filing system;
II. Designating only goods or services that are exactly the same as the referenced names of goods or services listed in the trademark electronic filing system;
III. Being a plain trademark application, instead of a non-traditional trademark, a certification mark, a collective membership mark, or a collective trademark;
IV. Having the application fee paid (i) through a bank account linked with the electronic filing system, (ii) through an eATM with an electronic payment slip generated by the electronic filing system, or (iii) over the counter with the electronic payment slip generated by the electronic filing system; and
V. Having the power of attorney submitted within 20 days of filing, if any attorney is appointed.
Whether a trademark application is deemed filed under the “Fast-Track” Program can be ascertained from the published information on the trademark search system. A trademark application meeting all of the above-mentioned requirements will be forwarded for substantial examination approximately 2 months earlier than a non-expedited application. As a result, the first office action for a “Fast-Track” application filed over the past year, was issued at an average of about 1.4 to 1.6 months earlier than that for a non-expedited application.
Even though the growing number of applications filed under the “Fast-Track” Program may inevitably lead to a slow down of the examination of the non-expedited applications, the TIPO still decided to make the program permanent as of May 1, 2021. However, the TIPO also announced that it would be closely monitoring the trends of different filings routes in order to properly and fairly allocate its limited examination capacity.
As for the trademark applications that cannot meet the requirements to take advantage of the “Fast-Track” Program, the TIPO has also recognized the earnest needs of the applicants. The TIPO is planning to introduce another “Accelerated Examination” mechanism, which can be utilized with payment of additional official fee, under the current ongoing amendments to the Trademark Act.
With all efforts being put into expediting the examination process of trademark examination, the TIPO aims to assist the applicants in minimizing uncertainties before the launch of a new business. It is expected that the sooner the applicant’s trademark can be registered, the greater the chances that the applicant can get ahead of the game.