NEW RULES FOR GEO-GRAPHICAL INDICATIONS AS CERTIFICATION MARKS

11/01/2004

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In response to the new provision of Article 72 of the amended Trademark Act (effective from 28 November 2003), allowing geographical indica-tions to be registered as certification marks, the Intellectual Property Office (IPO) announced its Directions on Application for Registration of Geographical Indications as Certification Marks, which took effect on 2 September 2004. The main points of the Directions are as follows:

When an application is made to register a geographical indication as a certification mark, in principle the provisions of the Trademark Act regarding the registration of certification marks apply. However, in the set of articles governing the use of the mark that are sub-mitted with the application, the statement of what the mark is intended to identify should, in addition to such items as a description of the characteristics of the products, also include the following contents, to enable the examiners to determine whether the substantive criteria for a geographical indication are met:

1.A definition of the geographical area con-cerned;

2.The raw materials of the goods concerned and their region of origin;

3.A description of the characteristics of raw materials of goods;

4.A description of the manufacturing meth-ods and process of the goods; and

5.A description of special facts or factors related to the geographical environment.

In order to examine whether the substantive criteria for a geographical indication are ful-filled, the IPO will request assistance and opinions from the Council of Agriculture, Executive Yuan (in the case of agricultural produce other than alcoholic beverages), the National Treasury Agency, Ministry of Fi-nance (in the case of alcoholic beverages), or the authorities in charge of other relevant in-dustries, to assist the IPO examiners in de-ciding whether to grant registration.

In Taiwan, protection of geographical indica-tions is mainly achieved by the registration of certification marks under the Trademark Act. In view of this, owners of geographical indications should seek their registration as certification marks in Taiwan as soon as possible.