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Distinctiveness of a Trademark under Taiwan Trademarks Law

By IBLS Editor

 

Taiwan is an Asian Island of 35,801 Km2 (13,822.8 sq. mi.) and 23 million inhabitants.  As part of the Republic of China, Taiwan is playing a major role in the international trade arena, especially in all related to the outsourcing and manufacturing sector.  Thus, trademark holders worldwide are vigilant of Taiwan, and other Chinese territories, intellectual property ("IP") laws, including trademark laws.   Most trademark laws require that the mark be 'distinctive' to support IP protection.  This article explains the ?distinctiveness" requirement under Taiwan trademark law.

The Taiwan Trademark Act constitutes this country's legal framework for trademark protection.  Articles 5-2 and 23-4 of the Trademark Act concretely address the issue of distinctiveness.  The following are some of the factors considered by Taiwan Trademark law when examining trademark distinctiveness in goods or services:

1.      Consumer recognition by relevant consumers;

2.      How transactions are conducted and the manner how the trademark is used;

3.      If the trademark identifies goods or services and distinguishes them from others;

4.      The length of time the trademark has been used on the designated goods or services, the manner of use, and how the trademark is used by competitors in the same trade;

5.       The sales figures or amount of advertisement for the designated goods or services on which the trademark is used;

6.       The market presence, sales network and points of sale of the designated goods or services on which the trademark is used;

7.       Certificates issued by advertising agencies or mass media firms;

8.       Certificates issued by credible institutions;

9.       Registration certificates issued in other countries; and

10.   Other proofs of distinctiveness

The evaluation of distinctiveness applies to both domestic and foreign materials.  Yet, the judgment of local consumers must be made to determine whether they are able to recognize that trademark as a sign that identifies goods or services.   

Under the Taiwan Trademark Act, the following trademarks meet the distinctiveness requirements:

1.      Fanciful trademarks: marks that are designed through the use of the intellect rather through the use of existing words, phrases, or matters.  E.i. Sony, Kodak.

2.      Arbitrary trademarks: trademarks made out of existing words, phrases, or matters but when these are irrelevant to the designated goods or services.  E.i.  Apple (for computers); Uni-president (for beverages).

3.      Suggestive trademarks: these are trademarks that suggest the shape, quality, and utility of goods, nature, and composition, function of the goods or services.  E.i. Snow White (for skim creams), SawCut (for hand tools).

Following, there are examples of non-distinctive trademarks:

1.      Words, devices, colors, symbols, sounds, three-dimensional shapes, or any combination of these that describe goods or services.  E.i. Best Selection and healthy (for clothing), Body clean & Re-build (for multivitamins).

2.      Marks or generic terms that usually used to refer to goods or services.

3.      Simple lines or geometrical patterns. 

4.      Non-stylized and meaningless Arabic figures. E.i. 12345 for poker cards.

5.      Devices that may be used as ornaments or decorations of the goods.  The examples provided by the Taiwan trademark office refer to Chinese symbols that refer to nutritious foods or other goods or services.  Yet, as good example under international standards is the use of the symbol of medicine for medical products.  This symbol is too generic and is usually used for anything related to the medical field (medicines, equipment, and clothing). 

6.       Popular slogan, motto, advertising expressions.  E.i. Double Healthy (for vitality products).

7.      Commonly used proverbs or expressions.  E.i. Body Shaping (for nutritional supplements), Happy birthday (for decorative goods).

8.      Country names or geographical locations. 

9.      Common last names .

10.  Common religious signs.

11.  Titles of familiar movies, TV programs, radio programs, songs, video tapes, audio tapes, and CDs.

Taiwan's Trademark Act was enacted in 1993 but it has been constantly updated.  The last update was made on 2004 and part of it dealt with the examination of the distinctiveness element of a trademark.    

Full post as published by IBLS Internet Law Blog on March 31, 2008 (boomark / email).