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| 1.
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These Main Points are prescribed for the application of
Articles 5-2 and 23-4 of the Trademark Act (hereinafter referred to as "this Act").
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| 2.
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In examining a trademark𠏋 distinctiveness, factors
such as the goods or services on which it is designated to be used, consumer
recognition, how transactions are actually made, and the manner in which
the trademark is used must be considered, so as to see if the trademark
is distinctive enough to be recognized by relevant consumers as a sign
that identifies goods or services and may distinguish them from those of others.
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| 3.
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Examples of Distinctive Trademarks:
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| (1)
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Fanciful trademarks: Trademarks that are devised through the use of intellect rather than adopted from any existing words, phrases, or matters.
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| (2) |
Arbitrary trademarks: Trademarks that consist of established words, phrases, or matters, and are completely irrelevant to the designated goods or services.
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| (3)
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Suggestive trademarks: Trademarks that suggest, by use
of metaphor or simile, the shape, quality, utility of the goods, or anything
related to the composition, nature, property, function or purpose of the goods,
but is not necessarily or commonly used by traders to describe goods or services.
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| Examples of Non-Distinctive Trademarks
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| (1) |
Marks or generic names that are customarily used to refer to goods or services.
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| (2)
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Words, devices, symbols, colors, sounds, three-dimensional
shapes, or any combination thereof that signify the shape, quality, utility or
describe the designated goods or services.
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" 體內環保 " (Chinese characters giving the meaning of " in vivo environmental protection") for Chinese drugs, western medications, preparations for clinical experiments.
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" 日語速成 " (Chinese characters giving the meaning of "quick Japanese acquisition") for books, magazines, monthly publications.
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"Body clean & Re-build" for multivitamins, nutritional supplements for medicinal purposes.
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"Best Selection & Healthy" for clothing, T-shirts, sportswear.
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| (3)
| A simple line or basic geometrical pattern.
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| (4)
| Non-stylized and meaningless Arabic figures.
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| (5)
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Devices that may easily be regarded as the ornaments or decorations of the goods.
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| (6)
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Popular slogan, motto, advertising expressions or devices of advertising nature.
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| (7)
| Frequently used proverbs or expressions.
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| Examples:
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" 財源廣進 " ("Wealth Coming From All Directions") for ancestor worship products.
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" 風調雨順 " ("Seasonable Weather With Gentle Breeze And Timely Rain") for Sake , Mao-tai liquors, kaoliang spirits.
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" 塑身 " ("Body-shaping") for nutritional supplements for medicinal purposes.
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| iv.
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"Happy Birthday" for stickers, decorative plastic stickers, advertising plastic stickers.
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| (8)
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Country names and familiar geographic names.
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| Examples:
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| i.
| " 奈及利亞 " (" Nigeria ") for TV sets.
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| ii.
| " 大台北地區 " ("The Taipei areas") for steamed stuffed buns, steamed bread.
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| iii.
| " 高雄 " (" Kaohsiung ") for clothing
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| iv.
| " 淡水老街 " ("Tamshui Old Street") for meatballs, fish croquettes, preserved duck's eggs, stewed eggs, aged hard eggs.
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| (9)
| Full titles of industrial/commercial enterprises, institutions and organizations.
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| Examples:
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| " 花昕股份有限公司 " ("Hua Shin Co., Ltd.") for shoes and boots.
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| " 中國玉器學會 " ("Chinese Jade Society") for jewelry, precious metals.
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| " 台北電腦同業公會 " ("Taipei Computer Association") for computer hosts, keyboards, data storage devices.
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| (10)
| Common surnames without design.
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| (11)
| Common religious signs.
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| (12)
| Model numbers or years of the designated goods or services in common business practice.
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| Examples:
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| "J816" for labels, envelopes, writing paper.
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| ii.
| "x200" for car and motorcycle parts.
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| iii.
| "2001" for wines, champagne, brandy.
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| "50 年代 " ("the 1950s") for buttons and zippers.
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| (13)
| Familiar book titles for use on books.
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| Examples:
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| 簡愛 ("Jane Eyre").
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| 金銀島 (" Treasure Island ").
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| 般若實相論 ("Pan-Jo-Shih-Hsiang-Lun").
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| (14)
| Titles that are adopted from familiar stories or common game titles for use on electronic game machines or cassettes, floppy disks, CDs, and circuit boards recorded with game programs.
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| Examples:
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| 西遊記 ("The Journey To The West").
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| 俄羅斯方塊 ("Tetris Worlds").
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| 水果盤 (fruit slot).
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Titles of familiar movies, TV programs, radio broadcasting programs and songs for motion pictures, video tapes, LDs, audio tapes and CDs.
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| Examples:
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" 花木蘭 " ("Mulan"), " 台灣之美 " ("The Beauty of Taiwan") for motion pictures, video tapes.
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" 望你早歸 " ("Waiting for Your Early Return"), " 安平追想曲 " ("A Song for Bringing Back the Memories in An-Ping") for audio tapes.
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(Non-distinctive trademarks are not limited only to those mentioned above.)
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| 5.
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Suggestive trademarks provided in Main Point 3(3) are
different from descriptive trademarks provided in Main Point 4(2). Whether
a trademark is descriptive or not should be based on the following matters:
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| (1)
| whether it has been actually used by competitors in the same trade; and
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| (2)
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whether such use by competitors in the same trade is
necessary, and that an exclusive use of the trademark by a particular trader
would impede fair competition.
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| 6.
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If the country names and familiar geographic names provided
in Main Point 4(8) are likely to mislead the public as to the quality, nature,
or place of origin of the goods, Article 23-1(11) of this Act shall apply; if
a trademark is descriptive of the place of origin of the goods, Article 23-1(2)
of this Act shall apply.
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| Examples:
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Where "LONDON" is used as a trademark on tobacco products
that are not produced in London, Article 23-1(11) of this Act shall apply.
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| ii.
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Where "LONDON" is used as a trademark on records that are
produced in the United Kingdom or in London, Article 23-1(2) of this Act shall
apply.
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| 7.
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If the titles of books, video games, movies, TV programs,
radio broadcasting programs and songs provided in Main Points 4(13), 4(14),
and 4(15) are sufficient to cause purchasers to associate them with the
contents of the goods, they are descriptive of the goods or services, and,
in such cases, Article 23-1(2) of this Act shall apply.
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| Examples:
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" 六法全書 " ("Compilation of ROC Laws") and " 生物學 " ("Biology") for books.
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" 摔角大賽 " ("Wrestling Contest") for video game cassettes and CD's.
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" 國際足球賽 " ("The International Football Championship") for videotapes.
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" 台灣民謠 " ("Taiwan Folk Songs") for audio tapes.
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| 8.
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Where a trademark is distinctive as a whole but contains
a word, device, symbol, color, sound, or three-dimensional shape that is
non-distinctive, the applicant may disclaim the exclusive right to use the
part apart from the trademark, so as to avoid refusal of registration of
the trademark, or any dispute arising from a claim of rights in that part
after the trademark is registered. Such a disclaimer shall be examined in
accordance with Article 19 of this Act.
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| 9.
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Except for marks or generic names that are customarily
used to refer to the designated goods or services as provided in Main Point
4(1), a non-distinctive trademark provided in Main Point 4 shall be deemed
to have had trademark distinctiveness if it is used by the applicant and
has become a sign identifying the applicant's goods or services offered
in the course of trade. In such a case, Article 23-4 of this Act shall apply.
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| Examples:
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" 大家說英語 Let's Talk in English" for books, magazines, periodicals.
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" 多喝水 " (Chinese characters meaning "Drink As Much Water As You Can") for mineral water, aerated water, fruit juice.
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" 一番搾 " (Japanese phrase meaning "Freshly Extracted") for beer, draft beer.
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" 學前教育 " (Chinese characters for
"Preschool Education") for magazines.
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| 10.
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In examining matters in relation to Article 23-4 of this
Act, all the following factors shall be considered:
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| (1) |
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;
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| (2) |
The sales figures or amount of advertisement for the designated
goods or services on which the trademark is used;
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| (3) |
The market presence, sales network and points of sale of
the designated goods or services on which the trademark is used;
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| (4) |
Certificates issued by advertising agencies or mass media firms;
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| (5)
| Certificates issued by credible institutions;
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| (6)
| Registration certificates issued in other countries; and
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| (7)
| Other proofs of distinctiveness.
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| 11.
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The evidence of distinctiveness as mentioned in Main Point
10 is not limited to domestic materials; however, in the case of foreign
materials, the judgment must still be made based on the fact of whether local
consumers are able to recognize the trademark as a sign that identifies goods
or services.
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| 12.
| These Main Points are applicable
mutatis mutandis to certification marks, collective marks, and collective trademarks.
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