New Trademark Distinctiveness Examination Guidelines Released

Trademark styles are becoming more diverse and overarching, while the average consumer’s perceptions and ideas towards trademarks are gradually evolving. With the aim of enhancing examination transparency and consistency, TIPO has revised the trademark examination guidelines with respect to distinctiveness, providing a number of illustrative examples of both allowance and rejection. The revisions came into effect on September 1, 2022.[1] A summary of the revised paragraphs is given below.

Words (Section 4.1)

Words in foreign languages may bear their inherent definition. If the word or combination of words falls outside customary usage of the designated products or services, nor does its creation adhere to grammatical norms, it is not considered to be a description of a product or service. Hence, such a word mark is distinctive. For example, “” is used on liquid heaters and reservoir heaters. The word “brisk”—defined as “active and energetic”—is often used to describe an individual’s personality. The combination of “brisk” and “heat” suggests a novel concept. Thus, “Brisk Heat” is considered to have distinctiveness.

Notably, the question of whether a combination of descriptive words is distinctive depends on the combined words as a whole. For example, “”—combining “zero” meaning none and “burn” meaning to incinerate—takes on a somewhat fanciful meaning when appearing on batteries and chargers. On the contrary, “” on beverages, “” on batteries, and “” on laundry detergents are not registrable because they remain descriptive after combination.

Latin Letters (Section 4.2)

A single letter, even if colored or framed, usually lacks distinctiveness; examples include “A” widely used on products of premium quality, “S, M, L, XL” referring to outfit sizes, “C” referring to a computer programming language, and “g” used as a weight unit. However, a specially designed or stylized letter that is able to function as a source indicator is deemed to be distinctive. Allowable examples are “”—for automobiles, motorbikes, and their parts, “”—comprising a letter Z and a butterfly graphic for cosmetics and bath kits, and “”—combining a letter D with an enclosed letter B for luggage and leather bags. 

Abbreviations and acronyms that refer to a business organization or names of new and emerging products or services are not considered distinctive; examples of these are “TFT,”—short for “thin-film transistor” and used on liquid crystal monitors, and “CC,”—short for “color control” or “color corrector” and used on cosmetics. However, acronyms that are created by the applicants themselves and are not ordinarily known in the industry are allowable. Examples include “IBM” and “HARP”—short for “High Aspect Ratio Process”.

Combinations of letters and numbers make up another popular group of trademarks. Serial number “No.1”, temperature “98℃” and chemical formula “H2O” are somewhat descriptive. Many such combinations are often seen in the industrial fields of automobiles, bicycles, machinery, hardware, hand-held devices, wearables, cameras and sports equipment. Standardized formats or types—such as model numbers “QX50” or “NX300”—do not serve the function of determining the source of products and are thus not deemed to be distinctive. It is advisable to present more evidence upon application to support the claim for distinctiveness. Rejected applications included “” on televisions—meaning four times full HD resolution—and “”—as merely a cell phone model. By contrast, those not referring to commercial specifications, models, makes, or types of a designated product or service may have distinctiveness; examples include “” on cosmetics, “” on clothing, and “” on household detergent, the latter being homophonically similar to “extremely clean” in Mandarin Chinese.

Graphics (4.4)

Some purely informative graphics to deliver necessary information linked to the products or services themselves—such as “” on cellphones to indicate resistance against water, stain, coldness, shock, etc.—are descriptive. Graphics reflecting trending events or current viral sensations are generally not considered to be distinctive. Examples include “”, which is a graphic representing a line-judging result by the badminton Hawk-Eye system and which has become popular due to a gold medal-winning match in the Summer Olympic Games, being used on masks, sports equipment and smart cards.

Geographical terms or logos indicative of geographical sources (4.5)

If the name of a nation is combined with other terms or graphics to generate a novel concept deviating from the descriptive meaning of the nation name itself, it may be considered distinctive; examples are “” on travel services, “ (Angel voice of the USA)” on hearing-aid devices, and “” on exotic restaurant services. On the contrary, “” on OTC drugs and baby foods is merely descriptive and therefore lacking in distinctiveness.

In addition, marks that are likely to mislead the public as to the nature, quality or place of origin of the goods or services are not registrable as trademarks according to Article 30(1)(8) of the Trademark Act. This often occurs with marks bearing geographical names; this is because certain geographical names that have a favorable reputation in some industrial fields, or which are notable in some designated products or services in the market, may be influential in customers’ decision making. In light of this, at least two factors are pertinent for evaluation: (1) the connection between the product/service and the place of origin and (2) the possibility of misleading customers as to the origin of the product/service.

First name, last name, and portrait of a person (4.6)

The use of another person’s portrait, notable name, stage name, title, etc., for trademark registration applications requires the person’s approval by default. Generally a name is distinctive, for example “”—an autograph of a name used on processed meat products—and “”—the stage name of an influencer in a creative font used on online streaming services. However, “”—referring to a famous YouTuber but which failed to obtain her approval prior to the application—is not registrable.

Portraits of the applicant—such as “”, “” and “”—are highly distinctive. However, in order to protect personal rights, the portrait of another person is not registrable due to anticompetitive concerns. Rejected examples are “” (Steve Jobs) on consumer electronics, “” (Albert Einstein) on culinary tools, and “” (Deng li-jun; died singer) on business consultation and beauty services.

Name of a company, store, group, organization, and domain (4.9)

The full name or the domain name of a company does not have distinctiveness because it only provides information as to the type or Internet domain of a service/organization. In the interests of preserving trademark integrity, no changes may be made to the trademark and its designated goods or services after the filing of an application. Hence, in order to avoid any instance of a trademark as a whole failing to indicate the source owing to any changes in the full name or the domain name after filing or transfer of company ownership, the informative content cannot be disclaimed but must be removed before filing or upon official request.

Religious graphics, terms, and folklore cultural logos (4.10)

Buddhist swastikas, Taoist Baguas, Christian crosses, Islamic star and crescents, etc. do not serve the function of indicating the origin of products and services and are therefore not deemed distinctive. However, other creatively designed logos may sometimes be considered distinctive, for example, “” (Matsu; Chinese goddess) used on personal hygiene, and “” used on gemstones and jewelry.