IPO publishes examination guidelines for unconventional marks

The Taiwan Intellectual Property Office (IPO) has promulgated its examination guidelines for three-dimensional, colour and sound marks. The guidelines implement parts of the new Taiwan Trademark Law, which came into effect on November 28 2003, that afford protection to unconventional trademarks (see Taiwan promulgates new, broader trademark law).

The guidelines' foreword states that unconventional marks per se are not recognized by the general public as an indication of origin for goods or services. Therefore, the distinctiveness test for this category of marks is more stringent than for conventional marks.

Firstly, the guidelines provide that three-dimensional marks may include any of the following:

• the configuration of the product;
  
  
• the configuration of the product package;
  
  
• three-dimensional symbols;
  
  
• the design of the place where the service is offered; and
  
  
• the combination of a three-dimensional symbol and word, device or colour.

Three-dimensional marks will not be registered if the shapes are dictated by function. The assessment of whether a shape is functional may include a consideration of whether it is:

• necessary for achieving the use or purpose of the product concerned;
  
  
• necessary for achieving the technical effect of the product concerned; or
  
  
• comparatively cost-effective, easy-to-make or better for manufacture of the product concerned.

Applicants may enter disclaimers against any functional part of their shape mark.

Secondly, the guidelines allow the registration of single colours and combinations of colours where the colour is capable of distinguishing the source of products or services. However, it does not include the combination of colours and words, devices or symbols. Single-colour marks are inherently non-distinctive, thus proof of acquired distinctiveness is required for registration.

Lastly, sound marks may include advertising jingles, a melody, a human voice, a chime or an animal cry. A sound mark shall be represented by:

• a musical score;
  
  
• a numerical musical score; or
  
  
• a written description.

A CD recording of the sound shall also be submitted to support the registration.

As of October 18 2004, the IPO had received 163 applications for three-dimensional marks, 70 applications for single-colour marks and 27 applications for sound marks. Only one application for a three-dimensional mark had been approved and registered at that date. Following the publication of the guidelines, more registrations of unconventional marks are expected in the near future.

Joseph S Yang, Lee and Li Attorneys at Law, Taipei