The long-anticipated amendments to the “Examination Guidelines on Distinctiveness of Trademarks” have been promulgated by Taiwan Intellectual Property Office on July 26 and will take effect on September 1, 2022. The amendments aim at establishing consistent examination standards and dealing with various distinctiveness issues in the digital age. The key points of said amendments are as follows.
1. Characters
Firstly, whether or not a trademark is distinctive cannot be considered in the abstract but instead shall be determined in relation to the goods or services for which trademark protection is sought. Under the pre-amended guidelines, a generic term or descriptive mark which directly describes attributes or features of goods or services is generally considered not inherently distinctive.
Nevertheless, according to the amendments, if a generic term or descriptive mark is depicted in a special or fanciful manner, thereby deviating from its ordinary meaning, the trademark in its entirety will be considered to have inherent distinctiveness and thus become allowed for registration with entry of disclaimer of ordinary letters. In contrast, the mark is not deemed distinctive if minor stylization of the trademark adds little to overall distinctiveness so that the descriptive mark is still perceived by consumers as its ordinary meaning.
Approved cases:
The trademark for 
has been registered in respect of cosmetics with entry of disclaimer of “ESSENTIA”. While the Latin word “ESSENTIA” refers to “essence” which is descriptive of the attributes of the goods, the combination of stylized characters with representation of leaves has rendered the trademark in its entirety inherently distinctive since it conveys a fresh and unique impression on the consumers’ mind.
2. Foreign words and compound words
Under the pre-amended guidelines, if the foreign language is familiar to local consumers, such as English, it is easier to determine whether the mark is a generic term or descriptive of the goods or services. For a language which is less familiar to local consumers, even if registration is approved because the mark is not deemed as a generic term or descriptive mark at the time of filing, it may still be vulnerable to opposition or invalidation proceedings due to non-distinctiveness.
Rejected cases:
a. “Parfum” means perfume in French and its use in connection with perfume goods is a generic term of the goods.
b. “Kaffee” means coffee in German and its use in connection with coffee and café is a generic term of the goods/services.
Under the amended guidelines, to determine whether a foreign compound word consisting of two common words is distinctive, the compound word must be examined in its entirety. If the compound word mark is a creative combination of dictionary words and requires imagination or similar cognitive activities of relevant consumers to comprehend the denoted feature or characteristics of the goods or services, it can be deemed sufficiently distinctive to qualify for registration.
Approved cases:
a. “BRISK HEAT”, being a creative combination of two common words “BRISK” and “HEAT” conveys a novel impression and the need for traders in the relevant industry to use the mark is relatively low. As such, the mark “BRISK HEAT” is deemed suggestive of goods, including surface heater and immersion heater and allowed for registration.
b. “ZEROBURN”, being a creative combination of two common words “ZERO” and “BURN” is deemed suggestive of batteries and chargers and granted registration.
3. Shapes and devices of goods or services
According to the pre-amended guidelines, the shape or representation of goods showing important features thereof is descriptive of the goods. Even if such shape or device has long been used, it cannot acquire distinctiveness.
Under the amendments, when a trademark comprising shapes or appearance of goods or services that bear a close resemblance to important features thereof, it will not be deemed sufficiently distinctive for registration since consumers will not perceive it as a source-identifier. In contrast, if a mark containing depiction of the goods or services is specially designed in an abstract concept and deviates from ordinary appearance of the goods, it is distinctive.
Rejected cases:
for book satchels refers to the shape of the goods and thus is descriptive and non-registrable.
Approved cases:
There is distinct difference between the special design of the mark and the actual shape of the microphone and speaker. As such, the device is no longer descriptive of the goods and thus distinctive for registration.
4. Slogan
Under the pre-amended guidelines, with the exception of a highly distinctive slogan, which enables consumers to immediately recognize it as a source-identifier, the registration of a slogan cannot be granted unless there is abundant evidence proving that it has acquired distinctiveness.
According to the amendments, in order to create a concise and compelling slogan, the addition of highly creative or distinct words to a slogan would make a unique or deep impression on the consumers’ mind and therefore accord sufficient distinctiveness to the slogan to merit registration. Provided that the slogan is not commonly used by the traders and grant of exclusive rights thereto will not hinder fair competition, the following factors may be taken into consideration:
a. Whether the slogan is a combination of fanciful marks or suggestive marks;
b. The slogan does not directly describes the characteristics, features or functions of goods or services;
c. The slogan does not contain advertising words or phrases that competitors commonly or necessarily use in the course of trade; and
d. The status of the applicant’s global branding, including actual registration and use of the slogan.
Approved cases:
, which consists of two phrases “open it.” and “Open it. Open Eat.”, is concise and easy to remember. Through the use of the grammatically incorrect expression implying “open and ready to eat”, this slogan is deemed inherently distinctive and has been allowed for registration in respect of jewelry and clothing.
Conclusion
Distinctiveness plays a crucial role in trademark registrability, scope of trademark protection and its enforceability. The above examples are meant for illustrative purposes under the amended guidelines and not an exhaustive list. If you are interested in understanding the latest trend of examination on trademark distinctiveness, please contact us.