Newsletter
TRADEMARK CASE HANDLING PRINCIPLES ANNOUNCED
The Intellectual Property Office (IPO) recently announced two sets of guidelines for trademark examinations. The main points are as follows:
．Principles for handling cases where the mark or the goods bear the wording "organic"
The Agricultural Production and Certification Act (APCA), as promulgated on 29 January 2007, provides that agricultural produce or processed organic products must be certified as organic before they may be offered for sale with the description "organic". Imported or-ganic produce or products must additionally pass a review by the Council of Agriculture. (COA) To bring trademark practice into line with the provisions of the APCA, the IPO has announced its "Principles for Handling Cases in Which the Mark or Goods Bear the Word-ing "Organic".
The Principles provide that in general, regis-tration of a trademark shall not be granted if the mark includes the characters "有機" (youji—"organic"), even if the applicant dis-claims exclusivity in such wording. However, this restriction does not apply if the applicant submits evidence showing that the products that it manufactures and/or markets have been certified as organic by a certification organi-zation accredited by the Council of Agricul-ture, so that they are permitted to be offered for sale with the description "organic". (Im-ported produce or processed goods that have been certified internationally must also have passed review by the COA.)
Where such evidence is provided in respect of a trademark, the applicant must also provide a disclaimer of exclusivity in the word "organic", and designated goods for which no proof of organic status has been submitted must be deleted from the application. If no evidence of organic status is provided in support of a mark, or the evidence submitted is not acceptable, then the word "organic" must be removed from the mark.
If the trademark does not include the word "organic" but description of designated goods includes the word "organic", evidence should be provided that such goods are permitted to be offered for sale with the description "or-ganic" under the terms of the ACPA. Where no such evidence is provided or the evidence submitted is not acceptable, goods described as "organic" may not be designated, and should be deleted from the application. If the applicant does not agree to their deletion, the IPO should delete them directly, ex officio.
．Principles for handling trademarks containing geographical names already registered for use in geographical certification marks
If the IPO has approved the use of a geo-graphical name as part of a geographical cer-tification mark, and an application is subse-quently filed for registration of a trademark that includes the same geographical name alone or in combination with other text, and the trademark is designated for use on goods or services related to those covered by the geographical certification mark, then registra-tion shall not be granted, even under a dis-claimer of exclusivity. If the geographical name forms only part of the trademark design, registration may be granted if the geographical name is deleted.