Jane H. C. Chen
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The New Trademark Act of Taiwan became effect as of 1 July 2012. As the New Trademark Act involves changes to several systems such as expansion of the scope of protection of non-conventional trademarks, amendments to the disclaimer provisions, deletion of the two-installment payment system and addition of new provisions regarding exclusive and non-exclusive license, to comply with the New Trademark Act, other supporting measures have been successively introduced, including amendments to the Enforcement Rules of the Trademark Act, amendments to Examination Guidelines and amendments to the Regulations of Trademark Government Fees. Recently, the Intellectual Property Office (IPO) promulgated the Examination Guidelines on Non-Conventional Trademarks based on the original Examination Guidelines on Three-Dimensional, Color and Sound Trademarks. The new Examination Guidelines discusses the definition and examination procedures of non-conventional trademarks, i.e., three-dimensional, color, sound, motion, hologram, position, scent, tactile and taste trademarks, and also took effect on 1 July 2012.
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The major amendments are outlined as follows:
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1.
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Specify the scope of non-conventional trademarks
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Non-conventional trademarks are not confined to color, three-dimensional, motion, hologram and sound trademarks expressly specified in the law. Where a sign that is sensible by smell, touch and taste and complies with the distinctive requirements of a trademark, it may be filed for registering as a trademark and entitled to protection under the Trademark Act.
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2.
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Specify trademark drawing, description and sample
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When filing an application for registering a non-conventional trademark, the applicant must, in addition to the drawing of the trademark, submit a description and trademark samples that faithfully depict the relevant trademark so as to establish the scope of trademark rights and to facilitate examination thereof. A trademark description and trademark sample(s) both supplement the drawing of the relevant trademark for assisting examination. Therefore, a trademark description and trademark sample(s) must be consistent with and refer to the drawing of the trademark.
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3.
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Three-dimensional trademarks
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1) |
Specify that a three-dimensional trademark may consist of a maximum of six perspective drawings in different views, which altogether constitute the drawing of the trademark
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2) |
When the non-distinctive or functional portion of a trademark is depicted in solid lines rather than in dotted lines such that disputes in respect of the scope of trademark rights of the entire trademark are likely to occur, a disclaimer must be made; alternatively, the non-distinctive or functional portion must be amended to be depicted in dotted lines.
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4.
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Add functional description for color trademarks
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The term "functional color" refers to colors that are required for intended purposes or technology effect or that will affect the cost or quality of the goods or services when applied on the designated goods or services. Under such circumstances, the colors are deemed to be functional and may not be granted registration; for example, the color black for solar collectors.
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5.
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Sound trademarks
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1) |
Specify that sound trademarks relating to music should be represented by musical score or numerical musical score, while non-musical sound trademarks may be depicted by written descriptions.
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2) |
Add functional description for sound trademarks
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When sound trademarks are indispensable for the applications or the intended uses of certain goods or services or will affect the cost and quality of good or services, they are deemed to be functional and may not be granted registration; for example, the sound of camera flashlights in connection with cameras.
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6.
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Add filing and examination provisions regarding motion trademarks and hologram trademarks
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1) |
Motion trademarks
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a) |
A motion trademark refers to a sequence of moving images, which have the function of identifying the source of goods or services. The subject matter that a motion trademark desires to protect is the overall commercial impression established by such moving images. In other words, the moving images as a whole, rather than any word, device, or symbol occurred during the process of such moving, acquire the trademark rights. If any word or device of a motion trademark desires to acquire trademark rights, a separate application for registration of such word or device as a general word trademark or device trademark should be filed.
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b) |
The drawing of a motion trademark consists of a maximum of six static graphic images.
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c) |
A description of the trademark should state, in sequence, the continual changes of the moving graphic images because the drawing of a motion trademark cannot be represented by sequential actions, and it should also specify the number of static graphic images that constitute the motion trademark.
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d) |
An application for registering a motion trademark should submit a sample (or samples) of the trademark, i.e., an electronic carrier recording moving images of the trademark, in a format that complies with the public notice of the competent trademark authority.
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2) |
Hologram trademarks
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a) |
A hologram trademark means the use of a hologram as a sign and the hologram by itself is capable of identifying the source of goods or services.
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b) |
A drawing of a hologram trademark is the perspective drawing of the hologram. For a hologram having one single view, a perspective drawing thereof is required. For a hologram having variable images because of different views, a maximum of four perspective drawings of the hologram in different view should be submitted in order to completely represent such hologram trademark.
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c) |
In principle, the key issues for examination of hologram trademarks are of no difference from those of conventional two-dimensional trademarks. Nevertheless, considering that holograms are mostly used for anti-counterfeiting purpose and consumers also have the same recognition, the registration of a hologram must establish that consumers will regard such hologram as an indicator of the source of goods or services, rather than an anti-counterfeiting label or a decoration of goods.
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7.
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Add general provisions regarding other non-conventional trademarks
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Specify that when examination of position trademarks, smell trademarks, tactile trademarks or taste trademarks, relevant provisions of this Guidelines should apply mutatis mutandis to the drawings, descriptions and samples of relevant trademarks.
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In view of the fact that non-conventional trademarks mentioned above become the subject matters entitled to protection under the Trademark Act of Taiwan, it is advisable that trademark right holders should first evaluate whether their trademarks seem feasible to be protected in Taiwan and if affirmative, then file applications therefor accordingly.
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