TIPS^®  Taiwan Intellectual Property Special

Trademark

Examination Guidelines on Disclaimers became effective from January 1st, 2010

From January 1st, 2010, all pending trademark applications will be subject to the new rule for disclaimers. The newly amended Examination Guidelines on Disclaimers enrich the content of the original Guidelines, specify various grounds for disclaimers and strengthen explanations with many examples.

According to Article 19 of the Trademark Act, “A proposed trademark featuring a descriptive or non-distinctive word, sign, symbol, color, or three-dimensional shape, where deletion of that feature will defect the whole of such trademark, may be registered when the applicant disclaims the exclusive right for using the said feature.” In addition, based on Article 23-1-3, no exclusive right can be granted to a generic sign or term used in relation to the designated goods or services.

Interpretation of Article 19 elaborates, only when the deletion of non-distinctive feature defects the original completion of a trademark that a disclaimer may be requested. However, the amended Guidelines relax such a restriction for disclaimer. In principle the TIPO will respect the wholeness of a trademark and will allow a disclaimer request. Only if the non-distinctive feature misleads consumers as to the quality or origin of goods and services, the TIPO will then require a deletion of the said feature.
Non-distinctive features needing a disclaimer include:
(1) Descriptive or generic terms, including assonance, i.e. “Secure Disc” should be disclaimed from the mark “SecurDisc,” “High-Tops” should be disclaimed from “HY TOPS.”
(2) Descriptive device or logo, i.e. a device of grapes designating on wines, a cup of coffee device for coffee products.
(3) Generic device or logo, i.e. medical cross logo
(4) Numbers, model numbers
(5) Generic signs, i.e. Ⅱ, Ω, ♂.

The Examination Guidelines also point out exceptions to disclaimers. A trademark does not need any disclaimer if it combines descriptive feature with other elements, the combination of which enables the entire mark to depart from its original concept, and therefore delivers an impression of novel and unique commercial idea. Inharmonious terms and assonant wordings are the types.

Trademarks composing of non-distinctive feature that have become distinctive through a massive volume of use are exempt from disclaimer requirement. It is worthy to note that a trademark registered with a disclaimer to its non-distinctive part may later file a new trademark application requesting a new registration without any disclaimer, as long as the disclaimed part has acquired distinctiveness through use in the marketplace. The famous slogan of De Beers “A Diamond is Forever” may provide a good example to this exception.