Taiwan - Intellectual Property

Amendment to Fair Trade Law to Eliminate Protection for FamousMarks

The Taiwan Intellectual Property Office ("TIPO") recently announced that the TIPO and the Fair Trade Commission ("FTC") held a third meeting to further discuss deletion of part of Article 20 in the Fair Trade Law which extends protection to unregistered famous trademarks, and extension of such protection to the Trademark Law.

During public hearings on the proposed amendments to the Trademark and Fair Trade Laws, however, attendees expressed that the proposed amendment to the Trademark Law would destroy the long tradition and principle of protection only for registered trademarks. Following the public hearings, the TIPO notified the FTC that the TIPO would not include the protection for unregistered famous trademarks into the Trademark Law amendment. The FTC responded that it would still delete protections for unregistered famous trademarks in its new amendment. This decision raised a question about Taiwan's compliance with the Paris Convention's Article 6 bis, protection of famous marks.

The third negotiation between the TIPO and FTC addressed the inconsistencies between the opinions of the TIPO and the FTC. After the meeting, the TIPO and FTC reached a conclusion that the Fair Trade Law's protections for unregistered famous marks will be maintained, but further discussion will be required to work out the details.

The TIPO sent a draft Amendment of the Trademark Law to the Executive Yuan in March. After approval, the Amendment will be sent to the Legislative Yuan for three readings before passage. The FTC has not presented its draft amendment yet. This delay is a blessing for some trademark owners, as some Taiwan courts have refused to extend protection to famous marks under the Trademark Law, but have done so under the Fair Trade Law.

Amendments to Copyright and Copyright Intermediary Organization Acts Pass Third Reading by the Legislative Yuan

The TIPO announced that the Legislative Yuan completed its third reading of amendments to the Copyright and Copyright Intermediary Organization Acts. The amendments have now been promulgated by the President. The amendments to the Copyright Law specify that criminal penalties do not apply in the following circumstances unless a work is under the management of a copyright collective management organization:

1. Exploitation of digitized karaoke machines or jukeboxes which

contain licensed duplication(s) of music works for public

performance;

2. Rebroadcasting works of an original broadcast;

3. Communicating the sounds or images of an original broadcast to the public with loudspeakers or other equipment;

4. Communicating works to the public through public broadcasting or simultaneous public transmission of authorized works through

broadcast advertising.

The amendment to the Copyright Intermediary Organization Act includes a revision of the procedures governing failure to pay royalty fees. The amendment states that the TIPO will only review royalty fees which are in dispute and reported by copyright owners or collective management organizations. The amendment also specifies the conditions under which a user may be exempt for criminal responsibility for violation of a tariff.

Draft Amendment of Patent Law Under Review by Legislative Yuan

The Executive Yuan sent the draft Amendment of the Patent Law to the Legislative Yuan for its review. Many of the changes bring the statute further into harmony with international trends. The main points of the amendment are as follows:

1. Amending the current term "new design" to "design";

2. Clarifying the definition of "practice" as a general concept for the term "use";

3.Extending the grace period for applying for invention and utility model patents;

4. Making the patent "claims and "abstract" independent of the specifications;

5. Allowing patent applications on animals and plants, following the standard in the US, South Korea and Australia;

6. Explicitly stating that if an applicant submits a patent application based on a foreign language application, the foreign specification cannot be revised after filing, and its Chinese translation shall not go beyond the disclosure of the originally filed foreign language specification; Introducing standards for rehabilitation of rights;

7. Loosening time limitations on applying for divisional patents and amendments;

8. Lengthening patent terms of patents covering pharmaceuticals or agrichemicals to account for government approval;

9. Defining regulations related exclusive licensing or non-exclusive licensing, providing the definition of exclusive licensing, and outlining the requirements for re-licensing exclusive licenses and non-exclusive licenses.

10. Amending regulations and circumstances under which invalidation can be filed, and abolishing the system of examination ex officio.

11. Amending regulations on compulsory licensing, including granting of compulsory licenses to ensure public health;

12. Clarifying the remedies and compensation for patent infringement;

13. Amending the examination procedures of utility model patents;

14. Amending the examination procedures of design patents;

The draft amendment is under review by the Legislative Yuan for three readings before passage.

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