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Revisions to the Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks Take Effect on October 1, 2022

trademark

To help businesses better understand the “Geographical Marks” protected under Taiwan's Trademark Act and subsequently enhance the quality of patent examinations, TIPO has revised the Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks, which took effect on October 1, 2022.  Main highlights are as follows:

I. Its name was revised to “Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks” to reflect the sequence of the provisions.

II. Added a separate chapter on “Geographical Marks” to promote and explain the registration process in Taiwan for the application of a geographical certification mark and geographical collective trademark.

III. Regarding the applicant’s declaration that he/she does not own a business that is involved in the manufacturing and marketing of goods or provision of services of the kind being certified:

i. Clear stipulations forbidding the applicant from registering a trademark in the same scope of the product or services being certified. Otherwise, the applicant is considered in violation of impartiality and the terms of the declaration.

ii.The applicant may, given that he/she fulfills the other requirements, apply to register another trademark outside of the scope of the product or services being certified.

IV. The regulations governing the use of the certified mark should clearly indicate the name of the products or services being certified:

i. When applying for a certification mark, the applicant is permitted to list the overarching category in the name of the product or service being certified (e.g., food, electronics, etc.). However, to ensure that the name clearly corresponds to the conditions of use set forth in the regulations governing the use of certification marks, as well as to facilitate applications for the utilization of  certification marks by any third-parties, TIPO followed the lead set by foreign counterparts and require that the names of products and services abide by NICE classification and be included as an annex in the regulations governing the use of certification marks for ease of publication.

ii. The names of products or services listed for “products or services being certified” should match what is listed in the regulations governing the use of the certified mark and the application and shall not extend beyond the scope listed therein.

V. Provide examples to illustrate the principles by which to determine what constitutes “obviously improper” – a term used in Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act – with regards to the registration of certification marks, collective membership marks, and collective trademarks.

VI. Additional case studies are added on the basis of supplementing the content for ease-of-understanding.

  • Publish Date : 2022-10-07
  • Update : 2022-10-07
  • Organization : International Affairs and Planning Division
  • Visitors : 407

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