TIPO publishes draft of amended Trademark Law

The Taiwan Intellectual Property Office (TIPO) has completed a draft of the amended Trademark Law. Key differences from the current Trademark Law include the following: 

• The draft law permits the trademark registration of motion marks, scent marks and holographic marks. 
• The draft adds the exhibition priority right - in future, applicants will be able to claim priority from a prior exhibition date if the application is filed within six months of the exhibition of the goods identified in the application. 
• The draft classifies trademark licences as either specific or non-specific. 
• The draft gives applicants that accidentally fail to pay a registration fee an opportunity to revive the trademark right.

In total, the draft law published by TIPO alters the existing Trademark Law by amending 38 articles, adding 23 articles and deleting eight articles. Further important changes are discussed below.

Determining whether a mark is distinctive
On 28th October 2008 TIPO published the Examination Guidelines for Trademark Distinction, which explain which types of trademark are distinctive and how to determine distinctiveness for each type of mark (eg, word marks, foreign words, letters, numerals, designs and family names). The criteria used to determine the distinctiveness of several types of mark are set out below.

Slogans, personal names and geographical names
Recently, many people have filed applications to register slogans, personal names or geographical names as trademarks. In the past examiners have sometimes rejected applications for these types of mark if the applicant fails to submit substantial evidence of use. However, as the criteria were unclear and there was a great deal of discrepancy among TIPO examiners, the guidelines explain when slogans, personal names and geographical names are sufficiently distinctive to be registered as trademarks.

In general, an applicant must submit substantial evidence of use of a slogan, personal name or geographical name to prove that it has acquired secondary meaning. In addition, the identified goods or services must not be related to the slogan, personal name or geographical name. If a slogan, personal name or geographical name does not meet these criteria, the application for trademark registration will be rejected.

Domain names
In general, domain names are not distinctive. An applicant must submit evidence of use to prove secondary meaning in order to obtain trademark registration for a domain name. If the applicant cannot prove secondary meaning, a domain name cannot be registered.

Foreign words
Foreign words must be translated into Chinese so that the examiner can understand the meaning of the foreign word. If the Chinese meaning is descriptive, based on the way that Taiwanese consumers understand the meaning, the mark cannot be registered.

The guidelines are expected to become effective during 2009.

New clauses for geographical certificate marks and geographical collective trademarks
Recently, many famous Taiwanese geographical indications have been registered in bad faith as trademarks in China. To protect Taiwanese industry, TIPO intends to amend the Trademark Law to add several new clauses that permit any business association, social organisation or farmers’ association to apply for the registration of geographical certificate marks or geographical collective trademarks so that geographical indications are better protected.

In addition, a certificate mark owner may only certify another party’s goods or services; it may not engage in business in connection with the certified goods or services. However, some groups, such as farmers’ associations, must not only certify another party’s goods or services, but also engage in business in connection with the certified goods or services. This situation results in certification marks being unable to meet demand. The amendment regarding geographical collective trademarks should help to resolve this situation