Proposed Amendments to Trademark Act in Taiwan passed second reading

On May 9, the proposed amendments to the Trademark Act quickly passed the second reading at the legislative body with a view to facilitate the industrial development, the efficiency of trademark applications review, and the adopting of international trend, among others. Some of the main features of the proposed amendments are: (i) more definitive descriptions of what constitute the use of a mark under the law; (ii) newer types of marks such as motion marks and hologram marks allowed to be registered; (iii) priority right afforded to trademark applicants within six months of an international exhibition; (iv) clearly differentiating of non-exclusive licensing from exclusive licensing in a way that non-exclusive licenses already in existence will not be affected by subsequent exclusive licensing; however, unless with prior approval of a trademark owner or its exclusive licensee, a non-exclusive licensee is not allowed to further license a third party; (v) to clearly prescribe that when cancelling or invalidating another’s mark, an applicant must establish his own mark has been used in the preceding three years or show proper cause why it has not; (vi) to clearly establish that the injunctive relief sought against an infringing mark does not require the proof of intent or negligence on the part of the infringer while a damages claim does; (vii) claim of infringement to a well-known mark can be based on dilution where it can be established there is a real likelihood of such case; (viii) to beef up border measures to further prevent clearing infringing goods through the Customs; (ix) to make clear that knowingly manufacture, possess, exhibit for sale, import and/or export of an infringing item will constitute infringement.