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[Introduction to New System] Accelerated Examination Mechanism for Trademark Applications in Taiwan, Effective as of May 1, 2024

I. Preface When an applicant in an application for trademark registration needs to promptly acquire the trademark rights, the applicant may apply for accelerated examination in accordance with Paragraph 8, Article 19 of the Trademark Act. For the trademark applicants’ understanding and foreseeing the requirements for accelerated examination and its applicability, these operating procedures are hereby formulated to specify the types of cases to which accelerated examination is applicable, the facts, reasons, and evidence that should be stated in the application for accelerated examination, and the time required for accelerated examination. The scope of accelerated examination is not applicable to other procedures such as trademark opposition, invalidation, and cancellation, and is inapplicable to applications for certification marks, collective membership marks and collective trademarks. II. Types

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INFORMATION LETTER ELECTRONIC TRADEMARK CERTIFICATES IN TAIWAN

We are pleased to  advise you of the recent information announced by the Taiwan Intellectual Property Office (TIPO) regarding the electronic trademark certificates. In order to enhance the digital technology services and achieve the energy saving and carbon reduction effects, the Taiwan Intellectual Property Office (TIPO) will begin issuing electronic trademark certificates on January 1, 2023. The said electronic certificates including the TIPO’s exclusive digital signature can hardly be forged and will be more conveniently authenticated. Considering that some trademark owners are still used to paper certificates, the TIPO will still provide applicants with the option to order the certificates in electronic or paper format at the initial stage of the implementing the electronic certificate system. The format and text of either the electronic certificate

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The new version of the “Online Trademark Application System” of TIPO will be open to the public from now on, providing the function of applying for 2D trademarks. Welcome to use more!

In order to improve the convenience of online trademark application, the Office has re-planned the system operation process and interface. Through the guided design, users can complete the application in 5 steps. The new version of the system will be officially available from February 15, 2022. For external services, priority is given to providing three application forms for the most commonly used 2D trademark applications, corrections and withdrawals. It is expected to gradually expand the application forms for color, sound, three-dimensional trademarks, device mark applications, divisional applications, and applications for change prior to registration in the second half of the year, to comprehensively improve the convenience of online trademark application. The new version of the system supports cross-browsers and mobile devices, and has many new

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Publication of Concordance List of Similar Group Codes for Taiwanese-Japanese- Nice Classification of Goods and Services (11th Edition-Version 2022)

In response to the amendments to the Nice Classification, 11th Edition-Version 2022 of the World Intellectual Property Organization (WIPO), the International Classification of Goods and Services under the Nice Agreement, TIPO synchronously updated the “Concordance List of Corresponding Similar Group Codes for Taiwanese-Japanese-Nice Classification of Goods and Services, 11th Edition-Version 2022”, applicants are welcome to use it as a reference for filing applications for trademark registration. Source: Intellectual Property Office

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Changes in Names of Designated Goods and Services for Trademark Registration and Retrieval Reference Materials

In response to the regular revisions of the 11th edition of the Nice International Classification of Goods and Services, a total of 601 items of goods / services have been added, 61 items have been deleted, and 30 items of class / sub-class names or notes have been added / removed / amended (see attached table for details). The implementation date of above changes is January 1, 2022, and the “Classes and Names of Designated Goods/Services” adopted for the Trademark Electronic Application System will be updated simultaneously. Those who apply for registration through the electronic trademark application system after January 1, 2011 are advised to download the latest content of changes before applying, so as to avoid using different names of the designated goods/services in

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Amendment of the International (Nice) Classification of Goods and Services (Nice 11th Edition-Version 2022)

The World Intellectual Property Organization (WIPO) revised the International Classification of Goods and Services under the Nice Agreement to the 11th Edition (Nice Classification, 11th Edition–Version 2022), effective on January 1, 2022. The “Nice 11-2022 Edition” of the “Amendment of the International (Nice) Classification of Goods and Services” is provided under “Information on Goods and Services” on the Trademark Home Page of TIPO for reference. Source: Intellectual Property Office

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“Industry Trademark Application Strategy Manual for Designated Goods and Services” is newly introduced — How to designate goods/services when applying for a trademark from an industry perspective”

In order to enable the specific industry to clearly grasp the required scope of trademark rights to protect its own business and to correctly select the designated goods or services when applying for trademark registration, the Intellectual Property Office has specially edited the “Industry Trademark Application Strategy Manual for Designated Goods and Services” and established the function of “Comparison Tables for Standard Industrial classification and Goods/Services Classification Search” system. Released by TIPO

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Trademark-2020 | New “Fast-Track” trademark examination mechanism to hit the road on May 1 for applicants to secure their rights quickly

To encourage applicants to utilize TIPO’s e-filing application system and to speed up trademark examination, TIPO will enforce a “Fast-Track” mechanism soon. From May 1, 2020 on, the trademark applicants who pay their fees duly and whose documents meet the following requirements at the time of application will find their cases examined two months earlier than others: e-filing applications. Only applications for plain trademark are eligible, excluding non-traditional trademark, certification mark, collective membership mark and collective trademark. The names of the designated goods or services are exactly the same as the ones listed in TIPO’s e-filing system. The fees are paid through a designated bank account or an electronic payment sheet in printed form by the counter or via eATM. A power of attorney should

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Trademark-2020 | Patent and trademark applicants may ask for reinstatement if failing to comply within a statutory time period due to the heated COVID-19 outbreak

As the title of this article suggests, if the delay of a statutory time period is caused by natural calamity or other causes not attributable to the applicant, according to Article 17 of the Patent Act and Article 12 of the Enforcement Rules of the Patent Act, or Article 8 of the Trademark Act and Article 9 of the Enforcement Rules of the Trademark Act, the applicant may file a request for reinstatement. Any patent or trademark applicant who fails to comply within a statutory time period due to the COVID-19 may file a request for reinstatement accompanied by the documents of proof. In principle, such cases will be determined leniently on a case-by-case basis. Released by TIPO

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Trademark-2019 | Changes made to the designated names of goods and services for trademark registration, as well as cross index references

The 11th edition of the Nice Classification of Goods and Services added 485 items and deleted 119 items as well as amended 40 groups, subgroups or notes in total. These changes entered into force on January 1, 2019. The database of the classification and designated names of goods and services established in TIPO’s electronic filing system would be updated simultaneously. Thus, starting from January 1, 2019, those who apply to register trademarks through TIPO’s electronic filing system should download the latest version. If the designated names of the goods and services listed in an application form do not conform to those in the electronic filing system, the NT$300 application fee deduction will not be applied. Released by TIPO

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