RULES ANNOUNCED FOR EX-AMINATION OF NON-EXCLUSIVE MATTER IN TRADEMARKS

11/01/2001

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On 28 August 2001, the IPO announced its Principles for Handling ex-Officio Examination of Disclaimable Non-Exclusive Matter. The main content is as follows:

Where a trademark includes descriptive or non-distinctive textual or graphic elements, the applicant may disclaim the right of exclu-sive use to such elements under Article 28 of the Enforcement Rules of the Trademark Law. If the applicant has not made such a disclaimer, from the date of the above announcement, examiners are empowered to ex officio dis-claim the right of exclusive use to such portion of a trademark, if there are precedents of such disclaimer or such a disclaimer is indisputable. The scope of such disclaimer should be pub-lished in the official Trademark Gazette.

Any disclaimer of a trademark that examiners may ex officio declare is limited to those pre-viously announced by the IPO, or matters of indisputable nature. Examiners may consult examples listed on the schedules appended to the above IPO announcement. However, if an examiner is in any doubt as to the meaning of a textual or graphic element in a trademark, he should instruct the applicant to provide an explanation before making a judgment as to the disclaimer.

To give an example from the schedules: words such as "science and technology," "precision," "communications," "interface," "search," "CD," "Internet," "card," "BIOS," "PC," or "chip" will be disclaimed if included in a trademark for a Class 9 application, designating the goods such as "computers," "interface cards," "Internet," "personal computers," "chips," or "automatic control equipment."

Because the IPO is empowered to ex officio de-termine a disclaimer of a trademark and to di-rectly announce the decision in the official Trademark Gazette, an applicant who disagrees with such a decision should make sure to file an administrative appeal within the 30-day time limit after the announcement.