In Taiwan, an application for a trademark designated for use upon “retail services” was not accepted until 1997.
According to the Examination Guidelines published by TIPO, retail services in Class 35 may be defined as follows:
- "retail of [identified goods] (for instance: cosmetics, clothing, and clocks); or
- "department store, supermarket, convenience store, shopping center, and online shopping, etc."[which suggests featuring a variety of goods.]
In general, “retail of [identified goods]” is deemed related to the identified goods possibly falling in varying classes. On the other hand, since a variety of goods is carried by department stores, supermarket, convenience store, and shopping center, etc., and since “department store” etc., is remote in nature from any identified goods, during examination of an applied-for mark designated for use upon “department store, supermarket, convenience store, and shopping center” etc., the Registrar of TIPO would not conduct cross-searches into the prior registered/filed trademarks in respect of any identified goods
However, the above principle is not necessarily absolute when it is applied to individual cases. An exemplified case is provided below.
A trademark owner filed an Opposition against the trademark 
(吳萬春WU WAN CHUN and device) registered in Class 35 in respect of “department store, convenience store, super market, shopping center, online shopping,” among others in view of its prior 
mark (台灣漢香府城吳萬春香行 Since 1902 and device) registered in respect of “incense sticks, incense powder” in Class 3.
One of the key questions raised in this case is whether or not the services designated by the opposed mark are related to “incense sticks, and incense powder” designated by the Opposer's mark .
The Examiner of TIPO, notwithstanding the principle mentioned above, gave a positive answer to the question and issued a Decision in favor of the Opposer.
The Registrant of the opposed mark, not being satisfied with such Decision, initiated an Administration Litigation with IPC Court, resulting in IPC Court issuing a Judgment which adhered to TIPO's Decision. .
The reasoning manifested in IPC Court's Judgment merits a discussion.
According to IPC Court, thanks to the diversified sales channels and marketing strategies in today’s commerce industry, there is a possibility that the goods designated by the Opposer's mark are sold in “department store, convenience store, supermarket, hypermarket, shopping center” etc. Moreover, in tandem with the emerging of e-commerce in which a wide range of goods are readily accessible, the sales channels and target consumers of the goods/services designated by the two parties’ marks may be overlapping under the general social concept and market transaction habit. In the meantime, the suppliers of the relevant goods/services may possibly be recognized by consumers as one and the same party or related with each other. As such, IPC Court held that “department store, supermarket, convenience store, online shopping,” etc. which suggests featuring a variety of goods is related to the goods designated by the Opposer's mark .
Based upon the teachings of the Decision/Judgment rendered by TIPO and IPC Court, we wish to invite the trademark owner's specific attention to the following:
- When filing a trademark application in respect of “identified goods”, the Applicant should have in mind that a prior filed/registered similar mark designated for use upon such retail services as department store, supermarket, convenience store, online shopping”, etc. [which suggests featuring a variety of goods] might be a block to registration of the applied-for mark.
- The owner of a trademark registered in respect of “identified goods” should preferably conduct a watch over any junior mark filed or registered in respect of such retail services as ”department store, supermarket, convenience store, online shopping”, etc. [which suggest featuring a variety of goods.] If any such trademark is found to be identical or highly similar, the trademark owner is advised to take counter-actions in a timely fashion.