| Trademark | |||
| I. | Summary of the 2025 Trademark Law Seminar held by the TIPO | ||
| The seminar primarily focused on the Article-by-Article Interpretation of the Trademark Act and the New Trademark Search System. A summary of the key points is provided below: | |||
| 1. | Key Points Regarding the "Article-by-Article Interpretation of the Trademark Act": | ||
| (1) | Designation of Goods or Services Beyond the Scope of Actual Trademark Use: | ||
| If the applicant is a natural person and designates an excessive number of goods or service classes, evidently exceeding the scope of actual trademark use or including items that are practically impossible to use, the TIPO may require the applicant to provide supporting evidence. | |||
| Examples include | |||
| • | Class 36: Banking services (a regulated industry) | ||
| • | Class 38: Telecommunication transmission (a regulated industry) | ||
| (2) | Subparagraph 8, Paragraph 1, Article 30 of the Trademark Act Cannot Be Overcome by Evidence of Use: | ||
| A. | Provision content: A trademark that is likely to mislead or cause misunderstanding among the public as to the nature, quality, or place of origin of the goods or services shall not be registered. | ||
| B. | This subparagraph primarily targets misrepresentation and does not contain provisions similar to Paragraph 2, Article 29, which allows applicants to overcome certain grounds for refusal by submitting evidence showing that the trademark has acquired distinctiveness in the marketplace and can be used to distinguish their goods or services from others. In practice, applicants often mistakenly believe that submitting evidence of extensive use can overcome this ground for refusal. However, even if the trademark has been used, it cannot overcome a refusal based on misrepresentation, which is different from a claim of acquired distinctiveness. |
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| C. | Refusal Case: “解酒王” ("Hangover King") (Application No. 113004398): | ||
| This mark was designated for goods such as plant extract nutritional supplements, herbal nutritional supplements, and nutritional supplements,” which fall under the category of food products. From the perspective of consumers, the trademark “Hangover King” implies that the designated goods contain ingredients or have effects that relieve hangovers or eliminate intoxication. This may mislead consumers regarding the nature or quality of the goods. Furthermore, the mark violates food labeling regulations, which prohibit false, exaggerated, or misleading claims. |
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| (3) | Timing for Submitting Evidence of Use in Non-Use Cancellation Cases (Three-Year Non-Use): | ||
| Evidence of use may still be submitted during the appeal or administrative litigation stages. If the registrant fails to provide evidence of use during the initial response to the cancellation action, and the trademark is canceled by the TIPO, the registrant may still submit such evidence during the appeal or administrative litigation proceedings. While TIPO has argued that, since no evidence was submitted during the original proceedings, the cancellation decision was not erroneous at the time it was made, the Supreme Administrative Court held that this position improperly deprives the trademark owner of their rights and adversely affects fair trade practices. The court concluded that evidence of use submitted during the appeal or litigation stage should be accepted. |
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| (4) | The Principle of Res Judicata Does Not Apply to Non-Use Cancellation Cases: | ||
| Whether a trademark has not been used for three consecutive years is assessed by counting back three years from the filing date of each cancellation action. As each case may have a different filing date, the relevant three-year period also differs. Therefore, the principle of res judicata (i.e., “the matter has been adjudicated”) does not apply. | |||
| 2. | New Trademark Search System | ||
| 1. | Search Result Limit Increased: | ||
| The maximum number of search results has been increased from 600 to 1,000 entries. | |||
| 2. | New AI Image Search Feature: | ||
| The system now supports AI-powered image searches. Users can upload an image to search for identical or similar designs. If the uploaded file contains both images and text, users can manually select the graphic portion, and the system will conduct the search based on the selected area. (Note: The traditional search-by-path function from the old system is still available.) |
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| II. | Examination of Trademarks Containing Green Claims Such as "Eco-Friendly," "Energy Saving," and "Carbon Reduction" | ||
| 1. | Introduction: | ||
| In July 2025, the Taiwan Intellectual Property Office (TIPO) held a business symposium during which it addressed international efforts to combat greenwashing—misleading environmental claims about products or services. To prevent trademarks containing green terms from misleading consumers, TIPO indicated that it will issue prior notices of reasons for refusal when such terms appear in trademark representations. Applicants will then be required to provide supporting evidence, amend, or delete elements relating to the mark or designated goods/services. During the meeting, the head of TIPO’s Examination Division presented case examples to clarify examination expectations. | |||
| 2. | International Measures Against Greenwashing | ||
| With the rise of green consumerism, terms such as “eco-friendly,” “green,” “carbon neutral,” “climate-friendly,” “sustainable,” “low carbon,” “net zero,” and “energy saving” have become widespread. However, greenwashing—i.e., presenting products or services as environmentally friendly when they are not—has become an increasing concern, as it misleads consumers into making purchasing decisions based on false or exaggerated environmental claims. | |||
| To address this issue, different jurisdictions have introduced guiding principles: | |||
| • | United States: | ||
| Green claims must be clearly substantiated, not exaggerated, and should specify whether the claim pertains to the product, its packaging, or the service offered. | |||
| • | European Union: | ||
| In 2024, the EU passed the "Directive on Empowering Consumers for the Green Transition", which will come into effect on September 27, 2026. The directive prohibits companies from using vague environmental claims such as "green" or "eco-friendly" unless they are verifiably accurate, in order to prevent greenwashing. | |||
| 3. | Taiwan’s Response to Greenwashing | ||
| • | Financial Supervisory Commission (FSC) issued “Guidelines for Financial Institutions to Prevent Greenwashing”, urging the financial industry to avoid potential greenwashing practices. | ||
| • | The Ministry of Environment released “Carbon Neutrality Guidelines” to help eliminate or prevent corporate greenwashing. | ||
| • | Fair Trade Commission (FTC) states that if a company engages in greenwashing and the behavior constitutes false advertising, it may impose a fine of up to NT$25 million. | ||
| 4. | TIPO’s Trademark Examination Approach Regarding Greenwashing | ||
| When applying for a trademark that contains green-related terminology, the applicant should carefully consider: | |||
| • | The overall impression created by the mark, | ||
| • | The designated goods or services, and | ||
| • | Whether the mark implies environmental benefits that may mislead the public. | ||
| If the mark gives rise to a likelihood of consumer misunderstanding or misbelief about the nature or quality of the goods/services, TIPO may determine that it constitutes a ground for refusal under Article 30(I)(8) of the Trademark Act (i.e., misleading or deceptive trademarks), and the trademark will not be approved for registration. | |||
| 5. | Approved Remark Text for Trademarks Containing Green Terminology | ||
| For trademarks containing green-related terminology, upon approval, the following remark will be included in the registration decision to remind applicants that use of the trademark after registration should not mislead or cause public misunderstanding: "This trademark incorporates the term “OOO” as shown in the representation of the mark. If, during actual use after registration, the trademark conveys false or misleading green claims that may cause the public to misunderstand the nature, quality, or origin of the goods or services, the registration may be subject to cancellation ex officio or upon request pursuant to Article 63, Paragraph 1, Subparagraph 5 of the Trademark Act." |
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