經通國際智慧產權事務所

Owning to the currently effective Examination Standards of Trademark Distinctiveness are viewed as to be lack of preciseness by the related public, the Taiwan Intellectual Property Office (TIPO) has announced the new Examination Standards for examining trademark distinctiveness, which are anticipated to be effective in January 2009.

The amended Examination Standards are basically in tune with the currently effective Examination Standards. The significant amendments include the limitation of acquired distinctiveness for registering the names of the historical figures, geographic areas and slogans as trademarks.

According to the new Examination Standards, the use of “Napoléon Bonaparte” as a trademark on videodiscs and the use of “Socrates” as a trademark on books will be considered to be descriptive of the designated goods. As a result, unless the applicants can provide the evidence of acquired distinctiveness through actual use, the TIPO will no longer grant trademark rights for trademark applications bearing the names of the historical figures with designated goods/services associated with the names of the historical figures. Also, for the trademark applications bearing the names of the geographic areas, unless acquired distinctiveness can be established, the TIPO will no longer grant trademark rights for trademark applications bearing the names of the geographic areas with designated goods/services associated with the names of the geographic areas. On the other hand, according to the new Examination Standards, commercial slogans such as “A Diamond is Forever” and “Just Do It” will only be allowed for registrations if the evidence of acquired distinctiveness is provided.

The new Examination Standards also aim to improve the evaluation criteria of the evidences as in the past, the Courts rarely gave consideration to market surveys submitted as evidence of actual use. The TIPO will set out standardized evaluation criteria including the public confidence of the organization conducting a survey, the objectivity of the questionnaires as well as the methods, the participants and the range of conducting a survey.

Several public hearings regarding the amendments of the Examination Standards were held by the TIPO. During the courses of the said public hearings, the expansion of Trademark Act to include the regulation of company names was suggested. The TIPO declined the said suggestion as the regulation of company names is already set forth in Company Act.

Organized and translated by Ken Hsu

International Affairs