Amendment to the Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks takes effect as of October 1, 2022

　The amendment to the “Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks” was promulgated on September 15, 2022 and has taken effect since October 1, 2022.  Taiwan IPO has amended the Examination Guidelines on the grounds that the procedures and examination requirements for registering a certification mark, collective membership mark, or a collective trademark are different from those for regular trademarks registration, and hence, it is necessary to add and establish more contents and example cases as clarification of questions arising from practice and of examination principles.  Key points of the amendment are summarized as follows.  

1.  The Guidelines is renamed as “Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks” to reflect the sequence of the provisions.  

2.  Provisions governing geographical marks are added in a separate chapter to establish and promote the mechanism of application and registration for “geographical certification marks” and “geographical collective trademarks” in Taiwan.

3.  Declaration made by the applicant of a certification mark with respect to his/her being not engaged in the business involving the goods or services of the kind being certified.  

(1)  There are provisions clearly providing that applicants of certification marks shall not register any trademarks in the same scope of the products or services being certified; otherwise, the applicants may be formally considered being engaged in the business of the goods or services being certified and thus in violation of impartiality and inconsistent with their declarations.  

(2)  Applicants of certification marks are allowed to apply for registering trademarks outside the scope of the goods or services being certified, unless their applications fall into any unregistrable circumstances.  

4.  The regulations governing the use of certified marks shall clearly specify the names of the goods or services being certified:  

(1)  For the application for a certification mark, the goods or services being certified to be listed in the contents of the certification may be described by generic names, such as, food, electronic appliances, etc.,.  However, in order to ensure that the names clearly correspond to the conditions of use set forth in the regulations governing the use of certification marks and also to facilitate any third parties’ applications for use of certification marks, Taiwan IPO, by reference of foreign counterparts’ practices, requires that the names of the goods or services being certified should be designated in accordance with the Nice Classification and should be included as annex of the regulations governing the use of certification marks for the convenience of publication.  

(2)  The names of “the goods or services being certified” should be consistent with those indicated under the content of certification in the regulations governing the use and in the application form and should not exceed the scope of the goods or services being certified listed under the “content of certification.  

5.  Examples are provided to set forth the principles for determining the existence of “obviously improper circumstances” listed in the proviso under Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act, with respect to the applications for registering certification marks, collective membership marks, and collective trademarks.  

6.  More case studies are provided to supplement clarification of the Guidelines and facilitate readers’ full understanding.  (Released 2022.08.29)

/CCS