Trademark  

You Can Register Anything -- Introduction to Draft Amendment to Trademark Act (1)

The Draft Amendment to the Trademark Act (hereinafter “The Draft”) is pending review at the Executive Yuan before being submitted to the Legislative Yuan (Congress) for three readings. In order to harmonize with the Singapore Treaty on the Law of Trademarks (STLT), effective as of March 2009, the Draft demonstrates many striking changes to the current Trademark Act that make Taiwan ascend to the peer group of the world’s advanced Trademark Acts.

The most courageous change in the Draft is to extend the trademark registration protection to all kinds of sensible marks. Article 18 of the Draft indicates that any distinctive marks can be trademarks; they may be words, graphics, symbols, colors, 3-D shapes, motions, holograms, sounds, scents or any combination of the above. However, the mark should acquire a distinctiveness that can sufficiently make consumers acknowledge that it is the indication of origin for goods and or services, and they can differentiate the goods or services of the mark from those of others. Until now, motion, hologram and scent marks have not been considered protectable subject matter under the current Trademark Act.

It is widely acknowledged that innovations led by human beings have brought unlimited possibilities to commercial activities. As an indication of one’s trade or business, the expression of trademarks have been explored to many sensible creations in order to impress and attract the targeted consumers. For non-conventional trademarks such as colors, sound, shapes, motion, hologram and scent marks, the determination of scope of rights and judgment of similarity when an infringement dispute arises are common problems considered by Trademark Offices and courts of any jurisdiction. While the inclusion of all forms of non-conventional marks in the Draft grants more flexibility to business owners to protect their creativity, it is worth observing whether more trademark oppositions and litigations will be brought to the TIPO or the IP Court in the future.