TIPS^®  Taiwan Intellectual Property Special

Registration Requirements for Non-Conventional Trademarks

After the newly amended Taiwan Trademark Law took effect on November 28, 2003, single color marks, sound marks and three-dimensional marks became registrable. The accompanying Enforcement Rules of the Taiwan Trademark Law were promulgated on December 10, 2003, stipulating the registration formalities for those non-conventional marks as follows.

1. Color Marks

The application should state that it is for a color mark registration. The color intended for protection, along with the description of the color shall be included in the application too. The applicant may use dotted lines to show how the color is used on goods or service. However, the protection does not extend to the dotted-line portion.

2. Sound Marks

The application should state that it is for a sound mark registration. The sound may be expressed by staff notation, music notes or literal description. A CD-ROM sample of the sound should be submitted with the application.

3. Three-dimensional Marks

The application should state that it is for a three-dimensional mark registration. The mark should be described by a three-dimensional drawing. To accurately present the three-dimensional mark, the applicant may submit no more than 5 perspective drawings or samples of the mark from different angles of the same scale. Side view drawings from each side of the three-dimensional mark are not sufficient for the purpose of the application.

Moreover, Article 17 of Taiwan Trademark Law requires that the specimen of a mark in a trademark application should be “visually perceivable.” Being “visually perceivable” means that, upon viewing the mark, consumers with common knowledge and experience are able to recognize the mark, representing by the words, symbol, note, color or the combination thereof.

As the new Trademark Law took effect on November 28, 2003, any single color, sound or three-dimensional mark that claims a priority date before November 28, 2003, shall have November 28, 2003 as its priority date.