Newsletter Taiwan (May 2023)

Trademark

I.            [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:

              1.           To establish an independent segment to handle trademark disputes.

              2.           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.

              3.           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.

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

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

              6.           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:

              1.           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.

                                          A.           Degree of imagination required by consumers:

                                                        High → "Suggestive" Trademarks

                                                        Low → "Descriptive" Trademarks

                                          B.           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

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

                                          D.           The extent to which competitors may need to use.:

                                                        High → "Descriptive" Trademarks

                                                        Low → "Suggestive" Trademarks

                            (3)         Slogans: Factors for determining distinctive slogans

                                          A.           Not commonly used or popular advertising slogans

                                          B.           No direct descriptive meaning

                                          C.           Does not affect fair competition among competitors

                                          D.           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.