TIPO proposes a change to the Examination Guidelines on Disclaimers

The Taiwan Intellectual Property Office (TIPO) announced on May 2, 2023, that determining the precise scope of rights to a trademark has become more complicated. This is because trademark usage patterns are getting increasingly diversified as new business models arise, such as internet marketing.

TIPO released an update to the Examination Guidelines on Disclaimers by the September 2022 revision to the Examination Guidelines on Trademark Distinctiveness. This article summarizes the main points.

Considering the influence of non-distinctive trademark features on rights

An applicant may incorrectly consider that non-distinctive parts of a trademark can be claimed separately. This can happen when the part isn’t just a description of the trademarked products or services, but also a mix of terms developed by the applicant or infrequently used by businesses. Consumers and rivals may question if trademark rights to such non-distinctive parts have been asserted. As a result, a disclaimer for this type of non-distinctive part is required.

Non-distinctive signs (other than descriptive and generic names) that are not descriptive are commonly used by businesses, such as:

• surnames;
• slogans;
• idioms; and
• popular terms.

Companies may desire to secure exclusive rights to certain signage. These indicators should normally be disclaimed if they are regarded to be non-distinctive.

Arabic numerals greater than two, model numbers, and symbols found to be non-distinctive should be avoided in general. They do not, however, need to be disclaimed if:

• the meaning of the numbers is:
  • clear (eg, specifications, quantities, time, and era);
  • commonly used in the industry; and
• The numbers do not raise any doubt about the scope of the rights to a trademark.

When the following factors cause ambiguity about the trademark rights to a non-distinctive element of a trademark, a disclaimer should be added:

• position;
• font size; or
• proportions.

Situations in which a disclaimer is not necessary

TIPO will identify a non-distinctive element of a trademark as an “example where a disclaimer is not required” if there is no uncertainty regarding the extent of the trademark’s rights. As a result, no disclaimer is necessary.

A disclaimer is not necessary if adequate evidence is found during the examination to show that a non-distinctive element is:

• commonly used by the industry and the public to describe the designated goods or services; and
• a direct and obvious description of the goods or services.

In this case, neither the trademark owner nor the industry should have any questions regarding the breadth of a trademark’s rights.

With case examples, principles for assessing whether to provide a disclaimer for non-distinctive features (such as numerals, slogans, idioms, and common words) have been introduced to the Examination Guidelines on Disclaimers. These are especially important for advertising slogans, lucky numbers, or numbers that are regularly utilized in the market for promotional purposes.

A disclaimer is not needed if consumers and rivals in the business think a trademark owner has not gained exclusive rights to such words or figures.

Purely informative components utilized in commerce (for example, business names, domain names, and descriptive graphics) are not part of a trademark and should be eliminated to explain the extent of a trademark’s rights. The guidelines have also been updated with new or revised practical examples and explanations.

– 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

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