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 of cases applying for accelerated examination
The necessity of immediate acquisition of rights is mainly based on the use of the applied trademark, and the types of applications for accelerated examination are as follows:
Type 1: All the designated goods or services in the application for trademark registration have been in actual use or been considerably prepared for use.
If all the designated goods or services in the application for trademark registration have been actually used in the market or if there is considerable preparation for use, it is recognized that there is an urgent need to acquire the rights and an application for accelerated examination may be filed. If not all of the goods or services have been actually launched on the market or substantially prepared for use, division or reduction should be applied for in accordance with the law in order to fulfill the requirements for accelerated examination.
Type 2: Some of the goods or services designated for trademark registration have been actually used or substantially prepared for use, and there is a necessity and urgency to acquire the rights in commerce.
1. The applicant shall be deemed to have the commercial necessity and urgency to acquire the rights under one of the following circumstances:
(1) The applicant’s trademark has been used or substantially prepared for use by a third party without consent.
(2) The applicant has received an infringement warning from a third party due to the use of the applied trademark.
(3) The third party has requested license for the applied trademark.
(4) The goods / services under the applied trademark have been planned to be marketed, and relevant sales or distribution contracts have been concluded with the cooperating manufacturers.
(5) The applied trademark has been planned to participate in the exhibitions, and relevant contracts have been concluded with the exhibitors.
(6) Other circumstances that fully recognize the necessity and urgency of acquiring rights in commerce.
2.Designated goods or services
When it is recognized that there is a need to acquire rights promptly under the aforementioned Type 2 condition, the applicant shall limit the application to the class of designated goods or services that are actually used or are substantially prepared for use. For those classes which are not in actual use or substantially prepared for use, the applicant shall apply for division or reduction of the designated goods or services in those classes.
III. Application Requirements
1. Time of application:
The applicant should request the accelerated examination during the period between the filing of the trademark application and the issuance of the first notice of examination result by the Taiwan Intellectual Property Office (TIPO). Once the TIPO has sent a notice of procedural correction or a notice of preliminary refusal, the case has entered the examination procedure. The applicant may inquire about the progress at any time and send a letter for urging examination, that is, there is no need to apply for accelerated examination.
2.State the facts, reasons and evidence:
The applicant shall claim the applicable type of accelerated examination based on the individual case, state the facts and reasons necessary for immediate acquisition of the right, and provide specific proofs, documents and evidence submitted by the applicant.
3.Fee:
In order to avoid crowding out the examination schedule of general applications and to take into account the user-pays principle, applicants for accelerated examination are required to pay, aside from the application fee of NT$3,000 for registration in each class, also an additional fee of NT$6,000 per class for accelerated examination.
IV. Examination Procedures:
1.The accelerated examination will commence from the date when the applicant fully pays the required fees.
2.If the supporting documents required for the application for accelerated examination are not complete, the TIPO will issue a notice within 10 working days (approximately 15 working days for paper applications) after receipt of the application for the applicant to make corrections. If the applicant fails to make corrections within the specified period, the application for accelerated examination will be rejected.
3.If the supporting documents for the accelerated examination application are complete, the application for trademark registration will be directly examined. Once the accelerated examination is approved, the trademark application will be shown as an “accelerated examination” case in the application status of the TIPO’s Trademark Search System, and no separate notice will be issued to the applicant.
4. For applications that meet the requirements for accelerated examination, after entering the case examination procedure, the TIPO will generally issue within two months after filing the first examination notice, including notification of approval or procedural corrections, or notification of the preliminary refusal. The actual time required for examination depends on the complexity of the designated goods or services, the types of trademark and other factors in each case.
5.After issuance of the notice of procedural corrections or preliminary refusal, if the applicant has filed response for making corrections or submitting opinions, and there are no other issues that can be notified for corrections in the case, the TIPO will, in principle, make a decision on the examination result within 15 working days after receipt of the response.
