Publication of the Draft Amendment to the Examination Guidelines on Disclaimers by the Taiwan Intellectual Property Office

Publication of the Draft Amendment to the Examination Guidelines on Disclaimers by the Taiwan Intellectual Property Office

Publication of the Draft Amendment to the Examination Guidelines on Disclaimers by the Taiwan Intellectual Property Office

According to a statement made on May 2, 2023, by the Taiwan Intellectual Property Office (“TIPO”), the patterns of trademark use have changed as a result of new business models like online marketing, making it challenging to predict in practice whether a trademark will cast doubt on the extent of the trademark’s rights. TIPO has proposed a change to the Examination Guidelines on Disclaimers, including the following essential aspects, to coincide with the amendment to the Examination Guidelines on the Distinctiveness of Trademarks on September 1, 2022:

The following criteria to take into account when deciding whether the non-distinctive component of a trademark could cast doubt on the extent of its rights:

  • The applicant can be wrongly under the impression that the rights to the such component may be claimed separately when the non-distinctive element of a trademark includes not only a description of the trademark’s indicated products or services but also a combination of terms invented by the applicant or infrequently used by companies. Customers and other businesses could question if trademark rights to such a non-distinctive portion have been asserted. A disclaimer should be included for this non-distinctive portion.
  • Businesses frequently favor or utilize other non-distinctive signs (apart from descriptive and generic names), such as surnames, slogans, idioms, and well-known non-descriptive phrases, for which they may seek exclusive rights. In general, such indicators should be disclaimed if they are determined to be non-distinctive.
  • Symbols that have been shown to be non-distinctive, Arabic numerals bigger than two, and model numbers should all typically be disclaimed. However, if the numbers have a clear meaning and are often used in the industry (such as specifications, amounts, time, and period), and if it can be proven that they do not cast any doubt on the extent of the trademark’s rights, they do not need to be disclaimed.
  • A disclaimer for that portion of the trademark should be included if the placement, font size, or proportion of the non-distinctive part could influence the applicant’s decision about whether to assert trademark rights to that part (for instance, if the non-distinctive part of the trademark is stylized and specifically enlarged or accentuated, raising questions about whether the rights to the text or device in such part have been acquired).

Clarification of situations where a disclaimer is not required:

  • When TIPO lists a non-distinctive portion of a trademark as an “example where a disclaimer is not required,” it signifies that the trademark’s rights are clear and that no disclaimer is necessary.
  • A disclaimer is not necessary if sufficient evidence is found during the examination to show that a non-distinctive element is a direct and obvious description of the designated goods or services, is commonly used by the industry and the public to describe such goods or services, and that neither the trademark owner nor the industry will have any doubts regarding the extent of the trademark’s rights.

With case examples, new or revised regulations have been included for assessing whether to submit a disclaimer for non-distinctive features including numerals, slogans, idioms, and common phrases. In particular, if consumers and rivals in the market perceive that the trademark owner has not acquired exclusive rights to advertising words or numbers with a blessing or promotional intent regularly used in the market, a disclaimer accordingly is not needed.

To make clear the extent of the trademark’s rights, any purely informative aspects that are utilized in commerce, such as business names, domain names, and descriptive graphics, should be removed. In addition, new or updated examples and explanations are provided.

*** Other Articles***

– You could visit here to see Procedure of Taiwan Trademark Registration.

– You could visit here to check the required documents for filing trademark in Taiwan.

– You could check trademark fee in Taiwan here.

– You could also read 04 Often Questions About Filing Trademark In Taiwan here.

Contact AAA IPRIGHT: Email: [email protected]

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