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The Executive Yuan Approved the Partial Draft Amendments to the Trademark Act on March 9, 2023

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Trademark

[Taiwan] The Executive Yuan Approved the Partial Draft Amendments to the Trademark Act on March 9, 2023

On March 9, 2023, the Executive Yuan Approved the Partial Draft Amendments to the Trademark Act. The main points about the amendment are as follows:

To establish an independent segment to handle trademark disputes.

To abolish the current administrative appeal process. When any related party disagrees about the final official decision made by the TIPO, they should initiate the legal proceedings directly with the court.

To establish special reexamination and dispute lawsuits: Review decisions made by the competent authority are administrative dispute resolution proceedings for private right disputes. Any parties disputing rights should file a “dispute lawsuit” against the other party (the defendant), and civil, not administrative, litigation proceedings will apply. To simplify the remedy system and prevent ambiguity, civil litigation proceedings shall hereon apply to all cases. The Court of final appeals, previously the Supreme Administrative Court, shall be the Supreme Court.

To abolish trademark Opposition procedures. One can file an Invalidation against a trademark registration after the three-month publication period.

To add a mechanism to accelerate examination for obtaining trademark rights (an official fee is required).

To relax the regulations by simplifying the application process for trademark revocation. If an applicant provides reasonable evidence against a registered trademark in the revocation, the investigation report is no longer required.

Source:

TIPO: https://www.tipo.gov.tw/en/cp-282-921973-b3023-2.html
(Mandarin) https://www.tipo.gov.tw/tw/cp-87-920152-38b75-1.html

II.

Practice of Examination on Trademark Distinctiveness in Taiwan

The distinctiveness of a trademark is a crucial criterion for obtaining registration. The possession of distinctiveness by a trademark determines if an applicant is eligible to acquire trademark rights. To address this issue, the Intellectual Property Office has formulated criteria for the examination of trademark distinctiveness (hereinafter referred to as the "Criteria"). The Criteria were revised and issued on July 26, 2022, and became effective on September 1, 2022. In April 2023, the Intellectual Property Office organized a seminar on trademark laws and regulations, during which new case examples were presented, and explanations were provided regarding the content of the Criteria. The relevant provisions and case examples are summarized below.s:

Determination of "suggestive" trademarks and "descriptive" trademarks:

(1)

"Suggestive" trademarks imply the quality, function, or other characteristics of goods or services in a metaphorical manner. Consumers need to employ a certain level of imagination, thought, perception, or reasoning to understand the association between the mark and the goods or services. "Suggestive" trademarks possess distinctiveness and are eligible for registration.

(2)

"Descriptive" trademarks directly and explicitly describe the quality, function, origin, or other relevant characteristics of goods or services. "Descriptive" trademarks lack distinctiveness and are not eligible for registration.

(3)

In practice, a gray area and room exist for interpretation between the above two categories. The Criteria provide several determining factors that applicants should consider when designing their trademarks to avoid being classified as "descriptive" and thus being ineligible for registration.

Degree of imagination required by consumers:

High → "Suggestive" Trademarks

Low → "Descriptive" Trademarks

Dictionary definition:

Not directly or explicitly related to the designated goods or services → "Suggestive" Trademarks;

Directly or explicitly related to the designated goods or services → "Descriptive" Trademarks

Usage in newspapers, magazines, or online: Judgment based on the searched information

The extent to which competitors may need to use.:

High → "Descriptive" Trademarks

Low → "Suggestive" Trademarks

(4)

We provide the following case examples from the examination criteria for your reference:

No.	Suggestive trademarks (possess distinctiveness)	Descriptive trademarks (lack distinctiveness)
1	The designated goods of this mark are “computer software products that provide data protection and security”. The logo depicts a hand symbolizing an attempt to steal information, being clamped between serrated blades, conveying the concept of the product in a suggestive manner.	「RECLINE COMFORT」 The designated goods of this mark are “bathtub products”. It directly and explicitly describes the quality or characteristics of the products, such as comfortable reclining and similar implications.
2	The designated goods of this mark are “suitcase products”. The logo features a sumo wrestler standing on top of a suitcase, conveying the implied message of the durability and sturdiness of the suitcase in a suggestive manner.	The designated goods of this mark are “coffee” which directly and explicitly describes the flavor of the product.
3	「BRISK HEAT」 The designated goods of this mark are “heater products”. The term "BRISK" conveys a sense of briskness and liveliness, combined with "HEAT," implying the product's excellent and rapid heating capabilities in a suggestive manner, rather than through direct and explicit description.

Other indications lacking inherent distinctiveness: Regarding the inherent distinctiveness of "numbers" or "combinations of numbers and letters", we herewith summarize some determining factors based on the examination criteria, along with case examples for your reference.

(1)

Examples of indications that lack distinctiveness:

Descriptive indications related to the quality, purpose, or other relevant characteristics of the designated goods or services, such as sequence numbers, years, quantities, etc.

Trademark	Designated goods/services	Reasons of lacking distinctness
1916	Wine	Vintage
185/65	Tires	Specifications
520875	Transportation information services	Easily associated with telephone numbers, product serial numbers, barcode numbers, or serial number representations.

Commonly used in the industry

Trademark	Designated goods/services	Reasons of lacking distinctness
777	Computer game software	Game developers prefer using lucky winning number representations.
4K	Television	Screen resolution display.
95	Gas station	Numerical indication of octane rating for unleaded gasoline.

Industry-based Judgement:

The Intellectual Property Office has compiled a list of industries that prefer or commonly use "combinations of letters and numbers" as model or specification indications for their goods or services. These industries include transportation vehicles such as automobiles, motorcycles, bicycles, machinery and tools, mobile phones (e.g., G9 smartphone), wearable electronic devices, cameras, and sports equipment (e.g., B-140 golf clubs).

For the above-mentioned industries, when "combinations of numbers and letters" are used as trademarks for the related goods or services, they are generally considered lacking distinctiveness.

On the other hand, for industries not included in the aforementioned categories, the use of combinations of letters and numbers as identifiers is generally considered distinctive. For example, “SK-II” cosmetics, and “G2000” leather bags.

(2)

Examples of indications that possess distinctiveness:

Trademark	Designated goods/services	Reasons of lacking distinctness
	Convenience store	Numbers not commonly used in the industry; not closely related to the nature of the service itself.
	Leather bags	Same as above
	Bathroom fixtures	"34" does not provide an explanation related to the designated goods, and its unique design features stacked placement.
	Lotions, toners	The overall design concept departs from the mere expression of product-related serial numbers.

(3)

Slogans: Factors for determining distinctive slogans

Not commonly used or popular advertising slogans

No direct descriptive meaning

Does not affect fair competition among competitors

Signs that are creative or suggestive in nature

For example:

Approved case: “IT'S A LOT BETTER AT NOVOTEL” (NOVOTE is a meaningless word)
Rejected case: “LA VIE EST BELLE” (French: Life is beautiful)
The trademark owner of "LANCOME LA VIE EST BELLE" (Registration No. 01633835) did not claim exclusive rights over the words "LA VIE EST BELLE" and obtained registration of the whole trademark.

(4)

Company names:

"Company names" are purely informational and should be "deleted" from trademarks. It is not allowed to disclaim the exclusive of the company names from the trademarks. This is to avoid the situations where the applicant's company name is changed during the prosecution of the application or after registration, or owing to the transfer of trademark rights, resulting in ambiguity in indicating the origin of goods or services.

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