Amendment to Examination Guidelines on Disclaimers takes effect as of August 1, 2023

 　Taiwan IPO announced the amendment to the Examination Guidelines on Disclaimers on May 31, 2023 which comes into force as of August 1, 2023.  

　Taiwan IPO proposed the amendment to the Examination Guidelines on Disclaimers (hereinafter the “Guidelines”) after years of enforcement of the Guidelines in view of the facts that the forms and patterns of trademark representation and use have greatly varied as a result of the emergence of new business models, such as, online marketing, which makes it difficult in practice to determine the scope of trademark rights, and also for the purpose of harmony with the amendment to the Examination Guidelines on the Distinctiveness of Trademarks on September 1, 2022.  The key points of the amendment to the Guidelines are summarized as follows.  

1.  Factors to consider whether the non-distinctive elements of a trademark “may give rise to doubts with respect to the scope of trademark rights” are provided in the amendment.

(1)  For the non-distinctive elements of a trademark that describe the trademark’s designated goods or services, in some cases, such elements may be the combination of words coined by the applicant or rarely used may cause the applicant to mistakenly believe that he/she can claim his/her rights separately with respect to such elements, and consumers and competitors in the same trade may have doubts about them included in a trademark being or being not registrable.  In these cases, a disclaimer is required.  

(2)  Non-distinctive signs other than descriptive words and generic terms, such as, names, slogans, idioms, popular expressions that are not descriptive, are usually preferably used by businesses, and businesses may intend to acquire the exclusive rights thereto.  For such signs, a disclaimer should be made if they are examined and found to be non-distinctive, so as to avoid the applicant’s mistaken belief that he/she may claim his/her rights to such signs.  

(3)  Likewise, a disclaimer is required for the Arabia numerals bigger than 2, model numbers, and symbols that are determined to be non-distinctive, except for those numbers that carry clear and specific meanings (for example, specifications, quantities, time, and eras) and have been commonly used in the industry so that they are determined to be unlikely to raise any doubts over the scope of trademark rights.  

(4)  There is a likelihood that the position, font size, or the proportion of non-distinctive elements affects applicants’ decision to or not to claim trademark rights to such elements.  For instance, the non-distinctive words or devices in a trademark which are so stylized and especially enlarged or emphasized that they arouse doubts over their registrability should be disclaimed accordingly.  

2.  Identification of situations in which a disclaimer is not required.  

(1)  For the non-distinctive part of a trademark that is announced and included by Taiwan IPO in the “list of examples of items that do not require a disclaimer for trademark registration”, such non-distinctive part would give rise to no doubts over the scope of the trademark rights, and hence, a disclaimer therefor is not required.  

(2)  Where there is sufficient evidence found during examination process to prove and determine that a non-distinctive element has been frequently and commonly used in the same trade and also by the public for describing the designated goods or services or for serving as a plain and straightforward description with respect to the characteristics of goods or services, and that neither the trademark proprietor nor the industry will have doubts about the scope of trademark rights, a disclaimer therefor will not be necessary.  

3.  The amendment also sets forth the principles for determining the necessity of a disclaimer for such non-distinctive elements as numbers, slogans, idioms, and popular expressions, with case examples provided as illustration.  In particular, with respect to the advertising expressions or numbers commonly seen for blessings or promotion on the market, a disclaimer may not be employed, provided that consumers and competitors in the same trade do not have doubts over the trademark proprietor having not acquired the exclusive rights to such expressions or numbers.  

4.  According to the amendment, the purely informative elements in commerce, such as, company name, domain names, or explanatory illustrations that are not part of a trademark should be deleted to specify the scope of trademark rights; practical examples and explanations are provided as well.  (Released 2023.05.31)  
/CCS