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3.11 Tips for designing a trademark to ensure its registration

A trademark is granted protection only after it has been registered. The owner of an unregistered trademark cannot prohibit another party from plagiarizing. Sometimes, the use of an unregistered trademark may infringe upon another party's trademark rights. In order to acquire registration, the design of a trademark should observe the following points:
Do not use the descriptive wording or device of goods as a trademark.
The Trademark Act prohibits a trademark registration application from containing the name, shape, quality, function or other descriptions of goods themselves, since the description of goods can be freely used by anyone in the industry; if one single party were to monopolize it, this would violate the principle of fair competition. Hence, the design of a trademark should be devoid of any description that is simply descriptive of the goods. For example, "殺蟑" (cockroach killer) for insecticides and "潔淨" (clean) for laundry detergents are deemed descriptions of goods. Conversely, the use of "克蟑" (cockroach preventer) and "一匙靈" (one spoon effective) for the goods are not routinely or actually used by the industries, nor do the terms directly describe the goods.
Do not use a trademark that is identical or confusingly similar to another person's registered trademark designated for identical or similar goods or services.
To avoid adopting an identical or confusingly similar design to someone else's registered trademark, a search for similar trademarks should be conducted before proceeding to design a trademark. TIPO’s online trademark search system, which allows the public to search for relevant information, can be found under the following address:
Do not use another party's well-known trademark as your own trademark.
The Trademark Act clearly forbids the registration of any trademark that is identical or similar to a well-known trademark. The protection of a well-known trademark does not depend on the prerequisite that the well-known trademark has to be registered in the ROC. Instead, protection is granted as long as the well-known trademark is recognized commonly by the domestic consumers. Moreover, the protection thereof is not confined to goods identical or similar to those covered by the well-known trademark, but extends to dissimilar goods. Therefore, the public must not think that they can plagiarize, use or deliberately register a well-known trademark that has not been registered in the ROC. In violation of the above, the right holder of the well-known trademark who suffers damages from the violation may request to terminate the use or request to cancel the trademark registration.
Do not use a trademark containing any word or figure that will easily cause consumers to misidentify the contents, nature, quality, or place of origin of the goods.
In other words, the application of any word or figure that will mislead or deceive consumers is refused to register in the Trademark Act. For instance, "烏蔘" (black ginseng) for chicken will cause the public to misidentify goods as containing ginseng; the use of "紅標" (red label), which was first used on rice wine by Taiwan Tobacco and Wine Company for medicated liquor, will cause the public to believe that the item in question is rice wine or contains rice wine as an ingredient. If the applicant is a producer of dairy products in the Hsiangshan District of Hsinchu but uses "初鹿" (Chu-Lu, a city in Taitung) on its fresh milk products, the public may incorrectly assume that the products were produced in Chu-Lu, Taitung, thereby misidentifying the place of origin. All of the above examples are refused to registerunder the Trademark Act. (§29;§30Ⅰ, Trademark Act)

  • Publish Date : 2008-04-23
  • Update : 2022-07-25
  • Organization : International Legal Affairs Office
  • Visitors : 1943

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