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Applications for Non-traditional Trademarks in Taiwan and the Implementation of Non-traditional Trademark Registration in Japan Starting April 1, 2015

By: Li-Pu Lee, Esq.
Formosan Brothers
Taipei, Taiwan

On April 15, 1997, the Trademark Act was amended to include the non-traditional subject matter of “colors” for a trademark application.  On May 28, 2003, the Trademark Act was further amended to include the non-traditional trademarks of “sounds” and “three-dimensional shapes.”  On June 29, 2011, the Trademark Act was again amended to expand its scope of subject matter to include “any sign with distinctiveness,” and listed “motions” and “holograms” as possible forms of trademark.

The following is a table showing the number of applications and approvals of non-traditional trademark up to the date of this article[1]

Form Applications Approvals
Sound 64

(June 1, 2003 to May 11, 2015)

44
Three-dimensional shape 755

(June 1, 2003 to May 11, 2015)

569
Color 71

(April 15, 1997 to May 11, 2015)

59
Hologram 3

(July 1, 2012 to May 11, 2015)

0
Motion 9

(July 1, 2012 to May 11, 2015)

5
others 18

(11 Scent Trademarks;5 Position Trademarks;2 Others)

(July 1, 2012 to May 11, 2015)

1

(Position Trademark)

As one can see from the preceding table, among the non-traditional trademarks, “three-dimensional shape” has the greatest number of applications, followed by “color,” with “hologram” having the least number of applications.

As to how non-traditional trademarks are examined and how its examination process is different from traditional trademarks, the Intellectual Property Office of Taiwan (“TIPO”) promulgated the “Examination Guidelines for Non-traditional Trademarks” (hereinafter as the “Guidelines”) on June 10, 2004, which was further amended on May 31, 2011 and went into force on July 1, 2012.  Although the types of trademark which may be registered in Taiwan have been expanded to “any sign with distinctiveness,” according to the Guidelines promulgated by TIPO, with respect to the trademarks which are non-sensible by sight such as trademarks of a certain scent, feel, or taste, there is still technical difficulties to be overcome in order to present such trademarks in a clear, precise, complete, objective, lasting, and easy to understand way, or to be certain of the scope of claims of the trademark through written description or trademark sample, so that a third party (especially business competitors) may unequivocally recognize such trademark and its claims through registration publications.   In addition, it is rare in the international arena for a non-traditional trademark to obtain the protection of a registration; therefore, the Guidelines provide explanations in regard to only the types of non-traditional trademarks which have been illustrated in the newly amended Trademark Act (i.e. sound, three-dimensional shape, color, hologram, and motion).  As to the types which has not been illustrated (e.g. odor, position, etc.), the Guidelines only provide a general explanation regarding the items to be submitted for application.

Taiwan is not alone in the move to include non-traditional trademarks.  Japan, Taiwan’s neighbor, also started to accept registration applications for non-traditional trademarks on April 1, 2015, and expanded its subject matter for a trademark claim to include “sound,” “color,” “position,” “motion,” and “hologram.”  The following is a case count of non-traditional trademark applications from April 1-24, 2015 as published by the Japan Patent Office (“JPO”)[2]

Date of Application April 1, 2015 April 1-24, 2015 (estimated)
Method of Application Electronic Paper  
Type of Application

 

Sound 142 9 194
Color 183 9 248
Position 102 1 117
Motion 32 0 45
Hologram 3 0 3
Total 462 19 607

 

Prior to this amendment, subject matter which may be claimed as provided in the Trademark Act of Japan includes only “text,” “figure,” “mark,” and “three-dimensional shape” or a combination of the aforementioned.  This amendment added “sound,” “color,” “position,” “motion,” and “hologram” to the list of subject matters for trademark application.  If one juxtaposes this amendment of Japan with Taiwan’s most recent amendment of the Trademark Act, the “position trademark,” which has been clearly illustrated in the Trademark Act of Japan, may also be a subject matter in a trademark application.

What is a “position trademark”?  A position trademark refers to a trademark whose list of claims show specifically and unequivocally where the trademark is to be affixed; that is, the trademark to be claimed needs to be affixed at a certain location on the merchandise in order to constitute a position trademark.  We would like to explain with the following example as shown on JPO’s webpage[3]

Ex. 1

knife

Ex. 2

Bag

In Ex. 1, the trademark illustrated by a blue long strip needs to be affixed to the middle of the knife handle and form a ring around the handle.  In Ex. 2, the trademark illustrated by a blue circle needs to be affixed to the side of the bottom half of the golf bag.

Although the latest amendment of the Trademark Act of Taiwan does not have “position trademark” in its list of subject matters, but since the Trademark Act of Taiwan has expanded the scope of claim to include “any sign with distinctiveness,” there has been a case of “position trademark” approved — Trademark No. 01685455 of Category 39 as published in the registration publication dated January 1, 2015 (as shown below).

Wing

Description of trademark: This is a position trademark.  It is comprised of red, white, and blue stripes arranged in a certain pattern on the spoiler and the back of the airplane.  The dotted lines denote the shape of the spoiler and the back of the airplane, and are not part of the trademark.

The aforementioned trademark is different from a color trademark.  A color trademark only needs to specify the combination of color, and does not need to specify where the trademark is positioned on the object.  Yet a position trademark needs to clearly identify where on the object the trademark is positioned.

In conclusion, as opposed to traditional trademarks, non-traditional trademarks are still in a developmental stage in terms of number of applications and approvals.  In regard to business operations, non-traditional trademarks can provide protection for the intangible assets of an enterprise in a greater scale.  Therefore, knowing claimable subject matters for non-traditional trademark is a priority for the protection of an enterprise’s interests.

For more information about Formosan Brothers, please visit the International Society of Primerus Law Firms.


[1] Data taken from: TIPO’s Trademark Search – Special Trademark Search (http://tmsearch.tipo.gov.tw/RAVS/wfm20200.html)

[2] Data taken from: Japan Patent Office(http://www.jpo.go.jp/seido/s_shouhyou/new_shouhyou_jyoukyou.htm)

[3] Please refer to data from JPO’s website: http://www.jpo.go.jp/seido/s_shouhyou/pdf/new_shouhyou_video/01.pdf


The general information contained herein is intended for informational purposes only. It is not intended to be, and should not be construed as, legal advice or legal opinion on any specific facts or circumstances.

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