TIPO Issues Guidelines On Third-Party Submissions In Trademark Application Proceedings

It has been a longstanding practice that third parties are allowed to submit comments and evidence of their own accord in pending trademark applications, and there is a noticeable trend that pre-issuance submissions are increasingly included in packages of trademark monitoring services.

In a bid to improve the transparency of trademark examination proceedings and to consolidate and harmonize its current practice, the Taiwan IP Office (TIPO) promulgated a set of Guidelines on Third-Party Submissions Made in Trademark Application Proceedings on June 20, 2019. The Guidelines took effect on the same day.

The gist of the Guidelines is as follows:

There is no restriction on a third party's standing. A Third-Party Submission can be considered even if it is filed anonymously, suppose other requirements are met. A Third-Party Submission will not be considered if it is filed after TIPO has issued a Ruling to the subject trademark application. A third party's filing of a Supplemental Submission is acceptable if it observes the same time restriction. A Third-Party Submission will not be considered if it is filed in a non-written form. A Third-Party Submission will not be considered if the arguments contained do not address any registrability issue of the subject mark, or if the arguments lack supporting materials that are relevant and admissible. A Third-Party Submission alleging the subject trademark infringes on a copyright, patent, or any other right will not be considered absent submission of either (i) a certificate...