EXAMINATION GUIDELINES ON TRADEMARK DISTINCTIVENESS PUBLISHED

01/01/2009

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The Intellectual Property Office recently announced Examination Guidelines on Trademark Distinctiveness, which has replaced much less detailed Main Points for Examination of Distinctiveness of Trademarks. The new Guidelines are being prepared in response to the continual development in the forms of trademarks and in their modes of use, driven by today's highly diverse commercial marketing techniques and the rapid development of digital media technologies.  Such trends greatly affect judgments as to distinctiveness, so that there is a need to establish objective examination guidelines in order to promote the greatest possible consistency in judgments arrived at by trademark examiners.
The main content of the Guidelines is outlined below:
Ÿ	The distinction between inherent and acquired distinctiveness is expressly stated.  Inherent distinctiveness is a distinctive character inherent in the trademark itself that does not need to be acquired through use.  Trademarks that are inherently distinctive may be distinguished into coined, arbitrary, and suggestive marks, according to the strength of their distinctiveness.  Acquired distinctiveness means that a mark initially was not distinctive, but its use in the market has resulted in relevant consumers being able to recognize it as a mark identifying a specific source of goods or services, so that it has become distinctive as a trademark.
Ÿ	The following factors should be considered when judging whether a trademark is suggestive or merely descriptive:
	1.	The degree to which consumers are required to use their imagination.
	2.	Dictionary definition.
	3.	Mode of use in newspapers, in magazines, or online.
	4.	The degree to which competitors may need to use the mark.
Ÿ	The judgment of whether a trademark is distinctive should be based on the perceptions of relevant consumers in Taiwan.  In determining whether a trademark is distinctive, examiners should consider the facts and evidence of the individual case, and make an overall judgment taking into consideration objective factors such as the mark's relationship with the designated goods or services, the status of use by competitors in the same industry, the mode of use by the applicant, and the situation of actual trade by the applicant.
Ÿ	In principle, a judgment as to the distinctiveness of foreign-language elements should be made on the basis of how they are comprehended by consumers in Taiwan .  In case of a generic name of the designated goods or services, or a description relating thereto, it is unlikely to the distinctive.  If the foreign-language text is a combination constructed by linking together two simple descriptive elements in such a way that there is no change in their original descriptive meaning, the combination remains non-distinctive.  If the foreign-language text is an incorrect spelling of a descriptive or generic term for the goods or services, or merely incorporates trivial changes, so that the impression given to consumers is still that of the correctly spelled descriptive meaning or generic term, the incorrect spelling remains non-distinctive.
Ÿ	Non-stylized individual letters or numerals, domain names, family names and company names, are not distinctive.  Simple lines, basic geometrical figures, or decorative motifs are in principle also not distinctive.  As for slogans, unless a slogan is highly creative, such that on first impression consumers are able to identify it as distinguishing a source of goods or services, then evidence must be provided to show that the slogan has acquired distinctiveness before it may be registered as a trademark.
Ÿ	With regard to a trademark that is not inherently distinctive, the applicant must provide evidence showing that the mark has acquired distinctiveness through use.  The criteria for judging whether distinctiveness has been acquired must be based on the perceptions of relevant consumers in Taiwan .  The following types of information can be used as evidence that a trademark for which registration is sought has acquired distinctiveness:
	1.	The mode and duration of the mark's use, and the status of its use by other enterprises in the same industry.
	2.	The sales volume, sales turnover, and market share of the designated goods or services.
	3.	Information on the quantity of advertising, advertising expenditure, and marketing activities in which the trademark is used on the designated goods or services.
	4.	Sales regions, market distribution, sales outlets or exhibition venues of the designated goods and services on which the trademark is used.
	5.	Evidence of trademark registration in other countries.
	6.	Market survey reports.