Newsletter
Announcement of Taiwan Intellectual Property Office's Draft Amendment to Examination Guidelines on Disclaimers
On 2 May 2023, the Taiwan Intellectual Property Office ("TIPO") announced that with the emergence of new business models such as online marketing, the patterns of trademark use have become more varied, making it difficult to determine in practice whether a trademark will raise doubts regarding the scope of the trademark's rights. In conjunction with the amendment to the Examination Guidelines on the Distinctiveness of Trademarks on 1 September 2022, TIPO has drafted an amendment to the Examination Guidelines on Disclaimers, with the following key points:
I. Stipulate the factors to consider when determining whether the non-distinctive part of a trademark may raise doubts about the scope of the trademark's rights:
1. Where the non-distinctive part of a trademark is not only a description of the trademark's designated goods or services but a combination of words coined by the applicant or rarely used by businesses, the applicant may mistakenly believe that the rights to such part may be claimed separately. Consumers and competitors may also have doubts about whether the trademark rights to such non-distinctive part have been claimed. Therefore, a disclaimer for such non-distinctive part should be made.
2. Other non-distinctive signs (other than descriptive and generic names), such as surnames, slogans, idioms, and popular terms that are not descriptive, are commonly favored or used by businesses, who may wish to obtain the exclusive rights thereto. Such signs, if judged to be non-distinctive, should generally be disclaimed.
3. Arabic numerals larger than two, model numbers, and symbols that have been determined to be non-distinctive should generally be disclaimed. However, if the meaning of the numbers is clear (such as specifications, quantities, time, and era) and commonly used in the industry, and if it can be determined that they do not raise any doubt about the scope of the trademark's rights, they do not need to be disclaimed.
4. Where the position, font size, or proportion of the non-distinctive part of a trademark may affect the applicant's judgment as to whether to claim the trademark rights to that part (for example, the non-distinctive part of a trademark is stylized and specifically enlarged or accentuated such that there may be doubts about whether the rights to the text or device in such part have been obtained), a disclaimer for such part should be made.
II. Clarification of situations where a disclaimer is not required:
1. If a non-distinctive part of a trademark is listed by TIPO as an "example where a disclaimer is not required," it means that there is no doubt about the scope of the trademark's rights, and a disclaimer therefor is not required.
2. If there is sufficient evidence during examination to determine that a non-distinctive element is commonly used by the industry and the public to describe the designated goods or services, and is a direct and obvious description of the goods or services, and that neither the trademark owner nor the industry will have doubts about the scope of the trademark's rights, a disclaimer therefor is not required.
III. Principles for determining whether to file a disclaimer for non-distinctive elements such as numbers, slogans, idioms, and popular terms have been added or amended, with case examples provided. Particularly for advertising language or numbers with a blessing or promotional purpose commonly used in the market, if consumers and competitors in the industry believe that the trademark owner has not obtained exclusive rights to such language or numbers, a disclaimer therefor is not required.
IV. Purely informational elements used in commerce, such as company names, domain names, and descriptive images, are not part of a trademark and should be deleted to clarify the scope of the trademark's rights. Practical examples and explanations have also been added or amended.