Taiwan IP Office updates examination guidelines for the digital age
The long-anticipated amendments to the Examination Guidelines on Distinctiveness of Trademarks were implemented by the Taiwan IP Office on 1 September 2022 after the completion of a five-week public review. The updates aim to establish consistent examination standards, as well as to provide up-to-date legislation regarding issues of distinctiveness in the digital age.
It is a long-established principle that a trademark’s distinctiveness cannot be considered in the abstract but instead must be determined in relation to the goods or services for which protection is sought. Under the old guidelines, a generic term or descriptive mark that directly describes attributes or features of goods or services was generally not considered inherently distinctive.
Nevertheless, according to the amendments, if a generic term or descriptive mark is depicted in a special or fanciful manner, thereby deviating from its ordinary meaning, the trademark in its entirety is considered to be inherently distinctive and thus will be allowed for registration provided that it is accompanied by a disclaimer (ie, the word mark in plain capitalised text). In contrast to this, a mark is not deemed distinctive merely by way of minor stylisation to the point that it is still perceived by consumers as descriptive.
For example, the trademark ESSENTIA has been registered in respect of cosmetics. While the Latin word ‘essentia’ refers to ‘essence’, which is descriptive of the attributes of the goods, the combination of stylised characters with a representation of leaves has rendered the trademark in its entirety inherently distinctive since it conveys a fresh and unique impression on the consumers’ mind.
Foreign words and compound words
Under the previous guidelines, it was deemed easier to determine whether a foreign word mark was a generic term or descriptive of the goods or services when the foreign language is familiar to local consumers (eg, English). In contrast, where the foreign language is less familiar to local consumers a mark would still be vulnerable to opposition or invalidation proceedings due to non-distinctiveness, even if registration is approved, because the mark is not deemed a generic term or descriptive at the time of filing.
For example, the following marks were refused registration:
- ‘Parfum’ means perfume in French and its use in connection with perfume goods was held to be generic.
- ‘Kaffee’ means coffee in German and its use in connection with coffee and café was held to be generic for these goods and services.
Under the amended guidelines, to determine whether a foreign compound word consisting of two common words is distinctive, the word must be examined in its entirety. If the compound word mark is a creative combination of dictionary words – which requires imagination or similar cognitive activities of relevant consumers to comprehend the denoted feature or characteristics of the goods or services – it can be deemed sufficiently distinctive to qualify for registration.
For example, the following compound word marks were granted registration:
- BRISK HEAT, being a creative combination of two common words ‘brisk’ and ‘heat’, conveys a novel impression and the need for traders in the relevant industry to use the mark is relatively low. As such, the mark BRISK HEAT was deemed to be suggestive of goods, including surface heaters and immersion heaters.
- ZEROBURN, being a creative combination of two common words ‘zero’ and ‘burn’, was deemed to be suggestive of batteries and chargers.
Shapes and devices of goods or services
According to the pre-amended guidelines, the shape or representation of goods showing important features thereof was deemed descriptive. Even if such a shape or device has long been used, it could not have acquired distinctiveness.
Under the amendments, when a trademark comprises the shape or appearance of goods or services, or bears a close resemblance to important features thereof, it will not be deemed sufficiently distinctive for registration, since consumers will not perceive it as a source-identifier. In contrast, if a mark containing a depiction of the goods or services is specially designed as an abstract concept and deviates from the ordinary appearance of the goods, it will be held to be distinctive.
For example, the following shape mark was rejected for book satchels. Referring to the shape of the goods, it is descriptive and thus non-registrable.
However, the following mark was accepted and is a good example of a registrable shape mark.
There is a distinct difference between the special design of this mark and the actual shape of the microphone and speaker. As such, the device was held to be no longer descriptive of the goods and was sufficiently distinctive to be registered.
Under the pre-amended guidelines – with the exception of a highly distinctive slogan which enables consumers to immediately recognise it as a source identifier – a slogan could not be registered without abundant evidence proving that it had acquired distinctiveness.
According to the amendments, the addition of highly creative or distinct words to a slogan make a unique or deep impression on the consumer’s mind, and therefore accord it sufficient distinctiveness to merit registration. Provided that the slogan is not commonly used by the traders – and that granting exclusive rights to it will not hinder fair competition – the following factors may be taken into consideration:
- whether the slogan is a combination of fanciful marks or suggestive marks;
- whether the slogan does not directly describe the characteristics, features or functions of the goods or services;
- whether the slogan contains advertising words or phrases that competitors commonly or necessarily use in the course of trade; and
- the status of the applicant’s global branding, including actual registration and use of the slogan.
For example, the slogan ‘OPEN IT. OPEN EAT. OPEN IT.’ has been approved for registration. This consists of two phrases ‘open it’ and ‘open eat. open it’ and is concise and easy to remember. Through the use of the grammatically incorrect expression implying ‘open and ready to eat’, this slogan is deemed inherently distinctive and was allowed for registration in respect of jewellery and clothing.
Distinctiveness is crucial when it comes to the registration of trademarks, as well as the scope of protection. The above examples are meant to illustrate the changes introduced by the amended guidelines only and are not an exhaustive list.
This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.
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