Guidelines on special types of marks issued

The Intellectual Property Office has issued its "Examination Guidelines on Certification Marks, Collective Trademarks and Collective Membership Marks".

According to the guidelines, a 'certification mark' includes ordinary certification marks and geographical certification marks. Only legal persons, organizations or government agencies capable of certifying another person's goods or services are eligible to apply for registration of a certification mark. To demonstrate eligibility, the applicant must provide documentary evidence in the form of:

• a declaration certifying that the applicant does not engage in the manufacture or marketing of goods or services to be certified; and
  
  
• the rules governing use of the certification mark.

For geographical certification marks, the correlation between the geographical elements and the characteristics of the goods/services requires detailed explanation, including a specification of the geographical area covered by the mark.

Collective trademarks, as with certification marks, include ordinary collective trademarks and geographical collective trademarks. Only business associations, social organizations or any other group of legal persons capable of controlling the use of the collective trademark are eligible to apply for registration of a collective trademark. An incorporated foundation, individual or company may not apply for registration of a collective trademark. The applicant must provide documentary evidence as to its eligibility and the rules governing use of the collective trademark. For geographical collective trademarks, the applicant also needs to delineate the defined geographical area and the characteristics of the goods or services in relation to the geographical area.

Collective membership marks are used to identify an organization or membership thereof. Only business associations, social organizations or any other group of legal persons capable of controlling the use of the mark are eligible to apply for registration of a collective membership mark. An incorporated foundation, individual or a company may not apply for registration of a collective membership mark. The applicant must provide documents evidencing its eligibility and the rules governing use of the collective membership mark in support of its registration.

The relevant provisions of the Trademark Act also apply to these special categories of marks, including those prohibiting registration of:

• non-distinctive or descriptive marks;
  
  
• marks that are likely to mislead the public with respect to the nature, quality, or place of origin of the goods or services; or
  
  
• marks that are likely to cause confusion to the relevant public.

A disclaimer may be used for the non-distinctive or descriptive parts of a mark, (eg, generic names of goods or services). However, for geographical certification marks or collective trademarks, it is not necessary to enter a disclaimer for a geographical name.

Kwan-Tao Li and Joseph S Yang, Lee and Li Attorneys at Law, Taipei