Zoomlaw Attorneys-at-Law - Taiwan
Under Article 18(2) of the Trademark Act, a trademark refers to any distinctive sign consisting of words, devices, symbols, colours, 3D shapes, motions, holograms, sounds or any combination of these. In order for the mark to be deemed distinctive, relevant consumers must be able to recognise it as a distinctive indication of the source of the goods or services. The Taiwan Intellectual Property Office (TIPO) conducts case-by-case examinations to analyse trademark applications as a whole, even if the applied-for mark contains non-distinctive elements. TIPO’s examination criteria depends on the type of trademark at issue.
Words or characters
The criteria for registrability is based on the meaning of words or characters and their relationship to the designated goods or services. If the words or characters are not intended to describe the goods or service’s function, quality or effect, or have a lower level of descriptiveness, then the mark is considered to have a high level of distinctiveness.
It would be improper to grant exclusive rights to marks that make it easy for consumers to understand the nature of the goods or services or the technology involved, regardless of whether the expression is new or there is another competitor already using the words or characters to describe the goods or services. With regard to homophones, TIPO may deem the mark to be distinctive if these elements make a new and unique impression on consumers in addition to being descriptive.
With regard to foreign words, a mark is not considered distinctive if it is a generic name else the meaning is a mere description of the goods or services. While a foreign word may pass through examination to grant, it is still subject to cancellation by opposition or invalidation proceedings. For an incorrect or custom spelling of a foreign word, the mark is not deemed to be distinctive if the words or characters can still be recognised by consumers as the generic name or description with only a minor modification in spelling.
A single, unadorned letter is unlikely to attract a consumer’s attention or make a trademark identifiable and distinguishable as the source of goods or services. Further, a single letter may sometimes be descriptive of the goods or services (eg, ‘S’, ‘M’ or ‘L’ for clothes). In this understanding, a single, unadorned letter can neither be distinctive, nor will it acquire distinctiveness as a result of the addition of a simple decorative frame or border. In order to make it distinctive, the letter must be specially designed or combined with other distinctive elements so that the entire letter identifies and distinguishes the source of goods or services.
A sign composed of two or more letters may be distinctive and registrable provided that it is not descriptive or a generic name of the designated goods or services.
Although a number can be registered as a trademark, a simple number is not considered to be distinctive. Normally, consumers do not deem a number to be a sign that identifies and distinguishes the source. In cases where numbers are presented in the form of characters, this is examined based on specific criteria for words and characters.
However, a number is considered to be distinctive if it is stylised or used only to imply the designated goods or services through their quality, function or other characteristics, in a way that digresses from the original meaning of the simple number and serves to identify and distinguish the source of the goods or services.
Combinations of letters and numbers
A combination of letters and numbers gives consumers the impression that it refers to the specification or type of the goods or services (eg, 4WD, MP3, 512MB), among other things, and is therefore not distinctive. If a combination consisting of letters and numbers is not determined to be descriptive of the specification, type or other such details of the designated goods or services during examination, then it may be registered as a trademark. Otherwise, when submitting a trademark application, applicants should submit additional information about the goods or services in useabout how the trademark is used and provide an explanation as to its use in the industry to determine its distinctiveness.