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On 10 March 2005, the Intellectual Property Office (IPO) and the International Trademark Association (INTA) jointly held the INTA-TIPO Examination Guidelines Roundtable. This is the first time that the IPO has held a roundtable with INTA in Taiwan. On this occasion four INTA experts came to Taiwan, while more than 40 lo-cally based participants attended, including personnel from the Ministry of Economic Af-fairs' administrative appeals committee, the Fair Trade Commission, INTA members in Taiwan, IPO trademark examiners, and other academics and experts. The roundtable was coordinated and arranged by Lee and Li Chief Senior Coun-selor Kwan-Tao Li and Senior Counselor Joseph S. Yang. The event proceeded smoothly and produced excellent results.
INTA first published Guidelines for Trademark Examination in 1998, since then the IPR au-thorities of many countries had referred to the guidelines when drafting their own trademark examination manuals. The main purpose of holding the roundtable was to join with INTA experts in scrutinizing Taiwan's trademark ex-amination guidelines, with the aim of more closely aligning them with current international practice.
The four main topics for discussion at the roundtable were "nontraditional trademarks," "likelihood of confusion," "conflict and com-plementarity in trademark protection between the Trademark Act and the Fair Trade Act," and "protection of geographical indications." The main contents of the discussions are as follows:
Nontraditional marks: Nontraditional trade-marks include three-dimensional marks, color marks, sound marks, scent marks, moving image marks, hologram marks, gesture marks, and taste marks. At present, the types of non-traditional mark for which protection can be granted in Taiwan are 3D marks, color marks, and sound marks. As for whether there is a need to extend protection to other types of nontraditional mark, the IPO stated that it would take decisions on this issue after con-sidering local conditions and international trends.
Likelihood of confusion: Participants raised numerous individual cases and explored the factors to be considered when determining whether confusion between marks is likely, but concluded that in all events the final judgment should be based on whether there is a likelihood of confusion or misidentification among consumers. Another topic raised was that the current ROC Trademark Act names "dilution" of a well-known mark, i.e. tar-nishment or blurring of the mark's distinct-iveness, as grounds for refusing registration. The US participants expressed the view that this aspect was more properly the responsibil-ity of rights holders. Rather than rejecting a mark on such grounds at the examination stage, it was preferable for rights holders to raise their objections through trademark op-position procedures.
Complimentarity and conflict between the Trademark Act and Fair Trade Act (FTA): Under the foreign legislation presented as examples at the roundtable, imitation of the look and feel or overall design of goods was a matter for civil litigation, and not for action by administrative agencies. The way such cases were handled in Taiwan, with administrative penalties first being imposed under the FTA, followed later by court proceedings, smacked of excessive government involvement in dis-putes over private interests. Also, with sepa-rate protection of registered and unregistered trademarks under the Trademark Act and the FTA, the differences in the penalties available under the two laws created an unreasonable situation, which could be improved if the supplementary status of the FTA's provisions could be made clear. The IPO is already dis-cussing this issue with the Fair Trade Com-mission, and hopefully the two agencies will soon reach a consensus and cooperate in put-ting forward legislative amendments.
Geographical indications: At present, geo-graphical indications can be protected as cer-tification marks under the Trademark Act, and last year the IPO issued its Operational Guideline on Application for Registration of Geographical Indications as Certification Marks. The academics and experts attending the roundtable engaged in a full discussion and exchange of views on the scope of application of geographical indications.
Following their successful exchange of views at the roundtable, in future the IPO and INTA are expected to continue their cooperation in pro-moting international exchanges in the examina-tion practice to further improve the relevant regulatory systems.
