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On 25 December 2001, the IPO announced its revised Main Points for Examination of Dis-tinctiveness of Trademarks. The main changes are as follows:
Definitions of coined trademark, arbitrary trademark and suggestive trademark are in-troduced, and all these three types are distinc-tive trademarks.
Generic emblem or name that commonly refer to the goods, and words, devices, symbols, color compositions or their combinations that signify the shape, quality, function or other descriptions of the goods, are included as the examples for each of distinctiveness.
Examples of non-distinctive marks are amended to include: familiar book name, if designated for use on book products; familiar story elements or commonly seen game names, if designated for use on electronic game ma-chines or cassettes, magnetic disks, optical disks or circuit boards recorded with game programs; and familiar names or titles of movies, TV programs, broadcasting programs, songs, etc., if designated for use on movies, video tapes, video disks, audio tapes or optical disks. The reason for these amendments is that if the above names are not familiar or commonly seen, but originate from the crea-tive imagination of the author or are used for the first time, they may not merely be used to express creative content, but may also have a distinctive function of identifying the source of the goods.
Criteria are added for distinguishing sugges-tive trademarks from descriptive marks, as follows:
1.Whether such mark has been used in transactions by competitors of the same trade; and
2.Whether such use by competitors of the same trade is necessary such that an exclu-sive use of the mark by certain traders would impede fair competition.
A new provision is added that if a non-distinctive trademark has been used by the applicant and has already become a mark identifying the goods supplied by the appli-cant in trade, it should be regarded as distinc-tive and registration should be granted; but this does not apply to marks or names cus-tomarily and commonly referring to such goods.
