The Amended Guidelines on Hearing Procedures for Trademark Dispute Cases Effective on June 11, 2024
[ August 2024 ] >Back| Trademark | |||||||||||||||||||
| I. | The Amended Guidelines on Hearing Procedures for Trademark Dispute Cases Effective on June 11, 2024 | ||||||||||||||||||
| The Taiwan Ministry of Economic Affairs published the amended Guidelines on Hearing Procedures for Trademark Dispute Cases on June 11, 2024, which govern procedures in administrative trademark disputes at the Taiwan Intellectual Property Office (TIPO). The guidelines are effective on the same day. | |||||||||||||||||||
| The main amendments are as follows: | |||||||||||||||||||
| 1. | To enhance the examination function of the hearing procedures, it is specified that in trademark dispute cases reviewed during hearings, at least three examiners must be assigned to conduct the review collegially. | ||||||||||||||||||
| 2. | The provision is added to allow for preliminary hearings depending on the complexity of the case. | ||||||||||||||||||
| 3. | Hearings should be conducted publicly, but if public disclosure would harm the public interest or cause significant damage to the parties involved, it is specified that a request for a non-public hearing may be made. | ||||||||||||||||||
| 4. | It is specified that if there is a change in the hearing date or location, cancellation of the hearing, or a change in the examiners, the notification and announcement procedures must be carried out again. | ||||||||||||||||||
| 5. | The provision is added to allow the presiding officer to moderately disclose their opinions on factual, legal, and evidentiary issues. | ||||||||||||||||||
| 6. | It is specified that hearings may be conducted via remote video conferencing, and the methods and legal effects of signing hearing records are established. | ||||||||||||||||||
| II. | Dispute Between a Cosmetics Company and a Health Supplement Company Over the 'BB' Trademark | ||||||||||||||||||
| 1. | Introduction: | ||||||||||||||||||
Skincare products, aside from being applied directly to the skin, have recently gained popularity in the form of ingestible products for skincare benefits, such as enzyme drinks, collagen, and beauty beverages. Consequently, products for cosmetic companies often cover both Class 3 (skincare) and Class 5 (nutritional supplements). This case involves a dispute between a cosmetics company and a health supplement company. The cosmetics company has filed an Invalidation application against the trademark of a Japanese company (a health supplement company), arguing that their trademark “ ”, which signifies products containing Vitamin B complex, lacks distinctiveness and should be revoked. This article will introduce the perspectives of the Intellectual Property and Commercial Court (hereinafter referred to as the Court) and the strategies employed by both parties. |
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| 2. | The trademarks of two parties: | ||||||||||||||||||
| (1) | Plaintiff (a cosmetics company): | ||||||||||||||||||
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| (2) | The Japanese company (a health supplement company): | ||||||||||||||||||
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| 3. | Issue in this Case: Does the trademark " " which signifies products containing Vitamin B complex have distinctiveness? |
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| (1) | Court's reasons for recognizing the Trademark " " as having inherent distinctiveness: |
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| A. | Although "B" is a commonly known letter, the combination "BB" may have various meanings or represent abbreviations of different words or terms, rather than having a fixed, commonly recognized meaning. Additionally, medical and nutritional supplements contain a wide range of raw materials, nutritional components, effects, and properties, not limited to Vitamin B complex. | ||||||||||||||||||
| B. | The trademark " " features a uniquely designed red special font that is highly eye-catching. This design serves to indicate and distinguish the source, rather than merely describing the ingredients or components. |
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| C. | The Japanese company holds 24 trademarks containing "BB" in Taiwan, with none of these trademarks required to disclaim the use of the "BB" text portion. This indicates that the contested trademark " " is designed with considerable distinctiveness compared to the ordinary "BB" text, thus demonstrating inherent distinctiveness. |
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| (2) |
The plaintiff argued that during the examination of the application for the trademark "
", the Intellectual Property Office (TIPO) issued a preliminary refusal notice, stating that the trademark implied the presence of Vitamin B1 and other vitamin components and was not distinctive when used for nutritional supplements. However, the Japanese company did not file a response, and the TIPO proceeded with approving the registration. The Court’s opinion: The refusal notice is merely a preliminary opinion from the examiner, giving the trademark applicant a chance to respond. It does not constitute a final determination, nor is it an administrative decision with legal effect or binding on the original authority. The TIPO's approval of the registration after review did not violate any laws or administrative regulations and did not breach principles of good faith. |
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| (3) |
The plaintiff claimed that the TIPO had approved the registration of 425 trademarks containing the "BB" element, and that only the Japanese company had obtained a trademark registration for "BB" text element.
The Court’s opinion: Trademark registration is examined on a case-by-case basis, with each trademark application differing based on the designated goods or services, or the trademark's design (such as font, color, etc.). The fact that there are other trademarks containing "BB" does not imply that the contested trademark lacks distinctiveness. |
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| (4) |
The plaintiff argued that "BB cream" is a generic term for cosmetics-related products and that because cosmetics and nutritional supplements share common features, such as function, consumer base, and sales channels, the "BB" text should not acquire exclusive rights for similar nutritional supplements.
The Court’s opinion: The plaintiff conflated "distinctiveness" with "similar goods" considerations. While "BB" may be a generic term for cosmetics, it cannot be broadly interpreted to mean that "BB" is also a generic term for nutritional supplements. |
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| 4. | Our Perspective: | ||||||||||||||||||
| (1) | The plaintiff has obtained several trademarks with "BB" as the main identifying element in Class 3. However, the plaintiff’s attempt to extend from external (Class 3 for skincare products) to internal (Class 5 for ingestible beauty liquids) use conflicted with the Japanese company's rights. After the Japanese company’s opposition led to the revocation of the plaintiff’s trademark in Class 5, the plaintiff accordingly took countermeasures by initiating an Invalidation against the Japanese company’s "BB" trademark. Nevertheless, given the recognition of the Japanese company's "BB" trademark, even if it is found not to have inherent distinctiveness, providing evidence of acquired distinctiveness would likely be feasible. Furthermore, even if the Japanese "BB" trademark were revoked, the Japanese company holds several other "BB" trademarks in Class 5 for nutritional supplements, so the practical benefit of revoking this trademark is limited. | ||||||||||||||||||
| (2) | Both parties in this case have their own prominence in the cosmetics and health supplement sectors respectively. Moving from one field to another presents its own challenges. Therefore, whether to continue the trademark dispute to the end or to seek a compromise requires comprehensive consideration to achieve the best outcome. | ||||||||||||||||||
| III. | The Timing for Assessing Registrability of a Trademark: What If a Trademark becomes Registrable during an Opposition Process? | ||||||||||||||||||
| According to Article 29, Paragraph 1 of the Trademark Act in Taiwan(“§29I” hereunder), trademarks that lack distinctiveness cannot be registered. Distinctiveness can be categorized as "inherent distinctiveness" or "acquired distinctiveness." The distinction lies in whether the trademark is inherently distinctive as a unique mark or if it acquires distinctiveness through subsequent uses. A mark that lacks inherent distinctiveness may be recognized by relevant consumers as a trademark through actual and commercial use, especially through long-term sales and use. If a mark acquires distinctiveness before an opposition or invalidation decision is made, and the lack of distinctiveness no longer exists by that time, should the registration still be canceled? The Supreme Administrative Court's Judgment No. 463 of 2022 provides a detailed analysis of this issue. First and foremost, when the Intellectual Property Office (IPO) makes a registration decision, it generally considers the distinctiveness at the time of the registration. §29 governs situations where trademarks lack distinctiveness and cannot be registered, while §30 specifies other circumstances where registration is prohibited. The rationale for the amendment of §30 indicates that the previous wording "cannot apply for registration" led to the practice of assessing registrability at the time of application. However, since trademarks require IPO’s review before registration, and the process usually takes several months, conditions may change during that period. The legislator revised the wording from “cannot apply for registration” to "cannot be registered", stating that “If the reason for refusal no longer exists at the time of review, and there are no risks for the public or private interest, it is unreasonable to issue a refusal based on the status of the trademark at the time of application.” Thus, the decision is generally based on the status at the time of the registration. §30II specifically provides that the evaluation of geographical indications, famous trademarks or persons, and malicious trademark squatting is based on the status at the time of application, thereby clarifying the legislators’ intent that the status of registrability under other provisions is determined at the time of registration. Oppositions against a trademark must be filed within three months of the publication of the registration. Invalidation applications cannot be filed more than five years after the publication date. This framework ensures that the opposition process serves to validate the legality of trademark registrations in a short period, enhancing the credibility of trademark rights. §60 stipulates that if an invalidation application is upheld, the registration should be canceled, unless the grounds for non-registrability no longer exist and non-cancellation outweighs the cancellation on the balance of public and private interests. The legislator here emphasizes that this balance is critical when evaluating the compact to trading order when invalidating a trademark registration. However, since oppositions must be filed within three months of publication, the impact on trading order is relatively minor. Thus, it excludes oppositions from the scope of §60’s proviso. Therefore, if an opposition is filed on the grounds of lack of distinctiveness, even if the trademark acquires distinctiveness during the opposition process, the IPO should still uphold the opposition and cancels the registration. In subsequent litigation, administrative courts should base their assessment of the trademark's distinctiveness on its status at the time of the registration, rather than at the time of opposition or the suit. |
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| The grounds for refusal of registration and the time to decide whether the grounds occur: | |||||||||||||||||||
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