Taiwan IP Updates  ¡V Feb 2023

By Lyndon 

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Taiwan Makes Revisions to Patent Examination Guidelines

The Taiwan Intellectual Property Office made some revisions regarding procedural examination and patent rights management that came into effect in December, 2022.  In Chapter 1 of the guidelines, the use of electronic signatures will be accepted provided both parties can agree to the validity thereof.  The signee only needs to provide a form of signature (whether it be a signature, stamp, or electronic signature) that matches the signature on the application documents.  In Chapter 3 of the guidelines, in accordance with adjustments made to procedural examination, revisions have been made to 3.1 Inventor Change, 4.1 Applicant Name or Title Change, and 4.5 Inventor Name Change.  Case studies have been included to help the public better understand the principles of examination.  The revisions also specify that applicants who are able to rectify inconsistencies on documents submitted with their applications do not fall under this category.  In accordance with a judicial ruling, TIPO also included a case study explanation regarding name changes for different applicants who belong to the same entity.  In Chapter 5 of the guidelines, procedures regarding three relevant scenarios concerning postponing the filing date, namely change in applying entity, addition of listed applicants and decrease in listed applicants have been clarified according to the relevant regulations.

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Taiwan Releases New Trademark Distinctiveness Examination Guidelines

The Taiwan Intellectual Property Office released new examination guidelines for trademarks which came into effect on September 1, 2022. Here are some of the most notable clauses:

1. Concerning words, when a word or combination of words is using a descriptive style, if it 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 may be allowed for registration provided that the ordinary letters are disclaimed. If the stylization is relatively minor so that the descriptive mark is still perceived by consumers as its ordinary meaning only, then it will not be approved due to a lack of distinctiveness.
2. For foreign words, even if registration is approved because the mark is not deemed as generic, it may still be vulnerable to opposition or invalidation proceedings. Thus, words like parfum (French for perfume) or kaffee (German for coffee) would not be eligible for registration. On the other hand, the combination of two words combined together in a unique way, like Brisk Heat or Zeroburn could be deemed as distinctive.
3. For slogans, it would be advantageous to add highly creative or distinct words to a slogan that would resonate amongst consumers. Such a slogan should not directly describe the characteristics, features or functions of the goods. Also, the slogan should not contain promotional words or phrases that competitors usually use. .

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