Comments on amending the draft IP law related to point h clause 2 Article 74
1. Regarding the proposal to amend the name of Clause 2 of Article 74
The name of Clause 2, Article 74 of the current Intellectual Property Law stipulates that “a mark is considered indistinguishable if it is a sign in one of the following cases”. Now the Draft Draft is expected to be revised into: “A trademark is considered indistinguishable if at the time of filing or the priority date in the case of priority, the mark in that application falls under one of the marks. following brand “.
According to us, the Drafting Committee’s proposal as above is unreasonable because of the following analysis:
Agree that not all marks  can be registered as a trademark, but only one that has the function of distinguishing products bearing that mark from products of the same type of others will be considered as trademarks. brand. On the other hand, trademark rights cannot be granted if the sign of registration deceives consumers about the origin, or characterizes the product or is contrary to the social order. Thus, Article 73  and Article 74 of the current IP Law are the legal basis to refuse to protect the trademarks applied for registration but fall into the cases detailed in Articles 73 and 74. In other words, the two mandatory legal criteria that must be assessed before granting protection to a trademark are: (a) the mark of application for trademark registration must be inherent distinctiveness, that is, it must not deceive, describe the functions, uses, ingredients, properties or other properties of the goods or services; and (b) the mark of application for trademark registration must not cause confusion (conflict) with another’s pre-existing trademark .
The meaning of Article 73 is that the law considers the sign for registration to have no trademark function (also known as the sign of exclusion) at the time it filed for registration (that is, the ability to distinguish itself). Different from the meaning of Article 74 that the mark of registration has a trademark function (is self-distinguishing) but cannot be granted for the reason that conflicts with the rights of others exist in the form of a trademark. Trade names, geographical indications, and industrial designs include unregistered trademarks that are widely used and recognized.
Since a trademark right is established at the time it is granted protection and not on the basis of the filing date / priority date, the distinguishing characteristic of the mark for registration of articles 73 and 74 is determined. completely different. The grounds of denial in Article 73 are theoretically called absolute grounds for refusal and the grounds for refusal in Article 74 are relative grounds for refusal. . According to that logic, it is incorrect that the Drafting Committee intends to include the phrase “if at the time of filing or the priority date in the case of priority entitlement” to the wording of Article 74, paragraph 2. The seminar equated the absolute basis of absolute denial and the relative denial basis, which has been identified the difference in legal nature in Articles 73 and 74 of the current IP Law.
2. Regarding the proposed amendment to Article 74 (2) (h) that has been controversial for the whole decade
Under the current Intellectual Property Law, a trademark applied for registration must be rejected if it is identical or confusingly similar to another’s registered trademark but has been terminated for less than 5 years. The reality shows that this law not only creates a multitude of protracted disputes and complaints, but also causes a lot of controversy that lasted for decades but has not yet been resolved. 
The Draft Proposal only proposes a small change of 3 years instead of 5 years, specifically article 74 (2) (h) is re-read as “a sign that is identical or confusingly similar to someone else’s trademark. registration for identical or similar goods or services but the registration of that mark has ceased to be effective for less than three years, unless the validity is terminated due to the fact that the mark is not used under the provisions of Point d Clause 1 Article 95 of this Law ”.
The most important question posed to Article 74 (2) (h) is how to remove, pave the way for an enterprise to enter the following market to have a chance to successfully register a trademark that is identical or similar to an existing trademark. Has the previous trademark owner’s registration been terminated without having to wait until the end of 3 years?
In our opinion, the amendment proposed by the Draft is not exhaustive, so if it is passed, the controversy surrounding this law will continue to persist because of the nature of another’s registered trademark but terminated may be a trademark of one of three forms: (a) not renewed after 10 years; (b) submit a waiver by the owner; (c) the trademark owner ceases to exist or is no longer in business without an heir.
Since it is not possible to suspend the validity of a trademark which has ceased to be effective, the following paragraph of Article 74 (2) (h) in the current IP Law “unless the validity is terminated for the reason of the trademark is not. Being used according to the provisions of Point d, Clause 1, Article 95 of this Law “is unreasonable, obstructing and controversial for a long time.