Jane H. C. Chen
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The Main Points for Examination of Disclaimers (Main Points) amended and effective on 1 May 2004 have been in force for several years. Because the Main Points are in the form of a list and not detailed, trademark examiners often find them inadequate in practice. In consequence, the Intellectual Property Office (IPO) published the Examination Guidelines on Disclaimers (Guidelines) effective as of 1 January 2010 to replace the Main Points. To facilitate the enforcement of the Guidelines, the IPO published, on 20 December 2009, the Examples of Disclaimers by an Ex Officio Action (Examples), which illustrate common disclaimer matters in International Classes 1-45. The examiners can refer to the Examples when they determine whether the IPO should disclaim by an ex officio action the exclusive use of any element of a trademark and add the relevant remarks to the registration record.
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The Guidelines, which were formulated on the basis of the Main Points, the actual practice in Taiwan in recent years, and the development in international trademark theories and practices, strengthen the theoretic substance of the disclaimer system, clearly illustrate the situations in which a disclaimer should be made, offer more concrete explanations of example cases, and clearly stipulate the standard form of disclaimers in order to provide a reasonable and consistent set of rules for practical use. Meanwhile, as the main objective of a disclaimer is to avoid disputes over the scope of trademark right, the IPO will ex officio disclaim the exclusive use of a trademark, on the condition that it does not give rise to disputes, to simplify the examination procedures and improve efficiency.
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The main points of the Guidelines are as follows:
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The disclaimer system is an administrative measure that forestalls possible disputes over trademark right occurred during the examination procedures. Whether there is a disclaimer of exclusive use of any element of a registered trademark is not the only basis for determining whether the trademark is distinctive.
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The Guidelines revise the standard form of disclaimers for a stylized word mark. That is, no matter to what extent the word is stylized, the subject of a disclaimer is always the non-stylized word.
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When a trademark is not distinctive in its entirety, it means that the entire trademark cannot serve as a sign identifying the source of goods or services. Therefore, it is not possible to allow such a trademark for registration even if the applicant makes a disclaimer to the entire trademark or any element thereof. For example, "72% SOAP SHOP 手工皂坊" (hand-made soap shop in Chinese) is such a non-distinctive mark.
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In respect of a trademark containing anything that is likely to cause the public to misidentify or form a mistaken belief about the nature, quality or place of origin of goods or services, if, after the applicant makes a disclaimer, consumers may still form a mistaken belief, the trademark cannot be registered with a disclaimer. However, if deletion of such element of the trademark, which is likely to cause the public to misidentify or form a mistaken belief about the nature, quality or place of origin of goods or services, will not cause substantial change of the trademark and the identity of the trademark is not affected, the trademark may be registered after the applicant deletes such element as required.
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Because the ® logo or the ™ logo is not part of a trademark, a trademark containing such logo may not be registered unless the logo is deleted.
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In the case of an application involving multiple classes, if any element of the trademark is descriptive or not distinctive in some of the classes, a disclaimer should be made in respect of those specific classes by stating: "A disclaimer of exclusive use of the element is made in respect of certain classes."
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Whether elements of a trademark are descriptive or non-distinctive should be determined at the time when the trademark is examined. If a later-filed trademark contains any word included in another registered trademark and no disclaimer was made to the word for the prior trademark on account of descriptiveness or non-distinctiveness, but if such word is found to be descriptive or non-distinctive on the basis of objective facts during examination of the later-filed mark, or if such word, through its combination with other words, is no longer the main element of the later-filed trademark and is merely descriptive of the goods or services, the later-filed trademark may be registered after a disclaimer is made. In such case, the owner of the later-filed trademark or any third party cannot raise any objection on the grounds that the prior trademark has been registered or that no disclaimer was made for the prior trademark. On the other hand, if descriptive or non-distinctive elements of a prior case which have been registered with a disclaimer have acquired distinctiveness through use, and if the trademark owner applies to register such elements as a trademark in a separate case, the trademark may be registered pursuant to Article 23-4 of the Trademark Act and is not subject to the disclaimer made in the prior case.
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Determination of similarity of trademarks depends on observation of the entirety of the trademarks. While the disclaimed elements usually attract less attention or are ignored in such determination, they may, depending on the facts of the individual cases, still be found likely to cause confusion. Therefore, they may still affect the determination of similarity between trademarks in their entirety.
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