Trademark: MOEA amended the Examination Guidelines for Non-Traditional Trademarks.

[2017/10/15]

The Ministry of Economic Affairs (MOEA) promulgated on September 12, 2017 the amendments to the “Examination Guidelines for Non-Traditional Trademarks” (the “Guidelines”) which became effective on the same day. In the current amendments, sections for “repeating-pattern marks” and “scent marks” were added to the Guidelines. The key points therein include the trademark description, distinctiveness, and functionality as described as follows:

1. Repeating-pattern mark

(1) Representation and description of trademarks

To register a repeating-pattern mark comprising one single compositional element or together with design patterns, numbers, and letters or other characters, applicants shall address in writing that it is a “repeating-pattern mark.” Should there be a specific method or position of use on the good, applicants may indicate such position with dotted lines and provide textual description that “the dotted lines form no part of the mark.” Marking the specific method and/or position of use or the content of a repeating-pattern with dotted lines as mentioned above would likely be helpful in determination of mark distinctiveness.

(2) Distinctiveness

Except for those with unique and unusual characteristics, the use of a repeating-pattern mark is liable to be perceived by consumers as ornamentation, instead of a mark indicating the source of a good or service. Should a repeating-pattern mark be determined as inherently indistinctive, applicants shall submit evidence to prove that such repeating-pattern mark has been distinguished by consumers as the source of a specific good or service on the market through actual use and the mark contains acquired distinctiveness in order to be approved for registration.

(3) Functionality

For example, a repeating-pattern comprising specific compositional elements containing a camouflage or hiding effect is used on products like clothing, such a repeating-pattern mark may be considered as functional and will be rejected for registration.

2. Scent mark

(1) Representation and description of trademarks

In addition to expressly indicating “this trademark is a scent mark” in the representation and description section, the content shall readily enable related consumers to link such a scent directly from the smell in their memories for clear acknowledgement and/or comprehension of the perceived smell of the scent applying for registration. Therefore, a description of the results of analysis using technology or equipment such as infrared spectroscopy, chromatography, vacuum distillation, magnetic resonance imaging, or the odor meter (e-nose) will be inadequate.

(2) Trademark sample

The actual good, package, or service-related articles using a scent mark shall be submitted as a sample to apply for scent mark registration. Should there be difficulties in submission of sample, applicants may provide the test paper containing such scent serving as the sample for scent mark registration.

(3) Distinctiveness

To be a scent having the trademark function for indicating the source of a good or service, it shall be, in general, an additional and specifically add-on scent, such as engine oil with a cherry scent, independent from the nature or the expected feature(s) of a good or service.

(4) Functionality

In determination of whether a scent shall be rejected for a functionality issue, it shall be first visited whether or not the purpose or intended use of such a scent on a specific good or service is indispensable to or will affect the cost or quality of the good or service. Should none of the above sustains, it is necessary to further determine whether the scent should be preserved in the public sphere in terms of the competitive strengths of the provision of scent.