The Taiwan Trademark Association was formed in the height of the Covid-19 pandemic. As the organization moves into a more normal time, its president says that it will continue to work closely with TIPO to provide professional legal training to trademark professionals. Ivy Choi reports.

The year 2020 marked the 90th anniversary of the enactment of the Taiwan Trademark Act. While Taiwan’s history of trademark laws dates back to nearly a century ago, it wasn’t until 2020 that a dedicated trademark organization was finally established. For the past three years, the Taiwan Trademark Association (TTA) has made great progress in achieving its vision of building a robust global network for Taiwan’s trademark community, despite challenges such as the Covid pandemic.

Grace Shao, president of TTA and a partner at Baker McKenzie in Taipei, said that prior to the establishment of TTA, the absence of a dedicated trademark organization in Taiwan made it difficult to sustain international collaborations, as there was no dedicated entity to facilitate such partnerships and exchanges, especially when there are already organizations such as INTA, the Japan Trademark Association, the China Trademark Association and other such local and regional organizations. “The founding president of TTA, Dr. Wen Pin Lai, is the key person in making this possible. With support from the Taiwan IP Office (TIPO), he invited 37 well-known trademark professionals as the founding members to establish TTA.”

Lai, also known as Peter Lai, established Chien Yeh & Associates in 1975; prior to the establishment of the TTA, he had a long history of working with Taiwanese companies doing business in mainland China.

According to Shao, TTA now comprises more than 200 members, including individual and group members. Individual members are mainly lawyers, trademark agents, IP-related legal personnel and law firm partners. Other members include corporate executives, professors, patent agents, designers and engineers. While the majority of group members are patent and trademark agencies, there are also high-tech enterprises, food companies, and design firms. “We hope to enhance the awareness and recognition of Taiwan brands,” Shao said.

Furthermore, TTA has become an official member of INTA, which opens more opportunities for TTA to collaborate with international counterparts, share insights, and contribute to global trademark discussions so that it can work towards its goal of strengthening international connections within the trademark industry. An example of TTA’s endeavour to strengthen its presence in the international trademark arena is hosting the “Taiwan Night” cocktail reception on May 18, during INTA’s 2023 annual meeting in Singapore. The reception attracted more than 120 guests from around the world, and was supported by partners including Yu Jen Jai, Delta, Acer, Gigabyte, Chi Po-lin Foundation, Hsin Tung Yangimei, Shin Kong Mitsukoshi, Wistron and Longkow.

“TTA has set its sights on expanding its network and influence by reaching out to different trademark organizations across various jurisdictions,” Shao said. “Target organizations include the Japan Trademark Association and China Trademark Association, among others. By broadening its connections, TTA aims to foster greater international cooperation, exchange ideas and best practices, and strengthen the global trademark ecosystem.”

In particular, promoting cross-strait trademark exchange between Taiwan and China is a challenging but essential aspect of TTA’s work. Shao said: “Given the complex political dynamics between Taiwan and mainland China, managing IP and trademark exchanges across the Strait can be intricate and sensitive.” Despite such challenges, Shao said TTA’s efforts in promoting cross-strait trademark exchanges could potentially bring about beneficial outcomes, though it will take patience, persistence, and strategic planning to achieve these goals. “It requires careful navigation, open dialogues, and efforts towards mutual understanding and recognition.”

The role of TTA is to help mitigate these cross-strait issues and shape a more cooperative trademark environment by establishing a platform for discussion, facilitating dialogue, and promoting understanding between the two sides. “TTA aims to foster a more harmonious trademark and IP environment between Taiwan and mainland China. This goal addresses any existing legal ambiguities and aims to promote mutual recognition of trademarks. So far, TTA has taken steps towards this goal by initiating online greeting meetings, a move that has started to bridge the gap and enhance communication with mainland Chinese organizations.” Future plans to further this goal include potential negotiations, academic exchanges, and collaborative projects with relevant mainland Chinese organizations. “By continuing these efforts, TTA aims to promote cross-Strait trademark exchanges, thereby enhancing the overall understanding and cooperation in the trademark industry between Taiwan and mainland China.”

TTA was founded in August 2020, during which Taiwan was facing serious impacts of Covid-19. Shao recalled: “The pandemic severely restricted physical interactions and halted many activities. This likely made it difficult for professionals in the trademark industry to network, collaborate, and share knowledge effectively.” Nevertheless, TTA did manage to bring together domestic expertise by organizing the “Master Talk” series, a professional seminar once every two months during the pandemic. “This initiative helped to maintain an active dialogue and foster knowledge sharing among industry professionals during these challenging times.”

One of the goals of TTA is to promote Taiwan’s trademark legal system through education, knowledge sharing, and promoting the understanding of legal reforms and best practices. In addition to the ongoing “Master Talk” series, TTA is also planning a new initiative called the “Fireside Chats”, which aims to delve into topics of brand management and franchise strategy. By inviting business leaders who specialize in these areas, the chats are expected to spark insightful discussions and knowledge exchange on practical aspects of the industry.

In response to the recent Trademark Act amendments, for which TTA has participated in legislative discussions with TIPO and the Legislative Yuan to protect the interests of trademark professionals, TTA has been providing related workshops regularly, covering the interpretation of new regulations, application and review processes, case studies, and more.

“The goal is to familiarize members with the latest laws and practical operations,” Shao said.

The recent Trademark Act amendments include a new system to regulate trademark agents, and a pending bill for restructuring the trademark prosecution system, to abolish the administrative appeal and establish a trademark review board within the TIPO. “In the future, trademark application and opposition matters will no longer be handled by administrative litigation procedures; instead, they will be handled by quasi-civil litigation procedures. Therefore, we anticipate there will be significant change and impact on the trademark industry and legal professionals.”

In addition, TTA plans to invite officials from TIPO to deliver lectures, ensuring that members are updated with the most current and authoritative information. It also plans to work closely with TIPO to provide professional legal training to trademark professionals, and to promote the image and international visibility of the TTA and its members.