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"*~FAQs for Trademark, Domain Name, Package and Company Name~*" |
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Similarity Article 37 (12) of the Trademark Law provides that a trademark device the same as or similar to other¡¦s registered trademark used with the identical or similar goods shall not be registered. According to repetitive precedents of the Administrative Court, similarity of the trademark is judged by determining whether confusion might be caused upon isolated observation. If the trademarks are similar in any one of appearance, concept, or pronunciation, they are similar trademarks. In addition, the fact that trademarks are similar in appearance when they possess the same foreign alphabets with different order or have similar apparent features merely with a few different alphabets is explicit in view of the Executive Yuan Tai 74 Ging Tzu 18068 letter notifying the acceptance of filing Examining Guidelines 1 and 2(7)¡Xregarding trademark similarity.
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Trademark Use According to Article 20 (2) of Trademark Law, Trademark and goods or services designated to be used therewith shall not be changed after filing provided that this shall not apply to reduction of designated goods or services to be used. According to Article 57(1) of Trademark Law, if any of the following cases occurs after the registration of a trademark, the trademark authority shall ex officio or upon request repeal the registration: ¡§Arbitrarily altering a trademark or affixing thereto a note to become identical or similar to a registered trademark of other used on identical or similar goods or service so as likely to confuse and mislead the relevant consumer.¡¨ According to Article 57(2) of Trademark Law, if any of the following cases occurs after the registration of a trademark, the trademark dedicated office shall ex officio or upon request repeal the registration: ¡§The trademark having not been used or being discontinued from use for three years without a due cause, provided that this shall not apply if the trademark has been used by a licensee.¡¨ According to Article 19 of Trademark Law, a trademark containing a portion of descriptive or indistinctive word, drawing, symbol, color or 3-dimensional shape may apply for trademark registration if the trademark will lose its integrity through deletion of said portion, provided that the applicant disclaims the exclusive rights in relation to said portion. According to Article 6 of Trademark Law, the use of a trademark referred to in this Law shall denote the use of the trademark on goods, services or its associated articles, or through utilization of planar image, digital video/audio, electronic medium or other medium, sufficient to cause associated consumers recognizing it as a trademark, for marketing purpose. According to Article 20 (2) of Trademark Law, the earlier registered trademark cannot be amended/corrected into a similar modified logo. Even if the modified logo is so similar with the earlier registered mark, so as to be protectible by the earlier registered marks, it is still suggestible to file a new trademark application for obtaining the registration for such new logo through the following elaboration. For example, if a modified logo obviates an element of the original trademark, it will be regarded as losing an indivisible/inseparable portion of the trademark, i.e. the trademark will lose its integrity through deletion of said portion. Specifically, the use of an element-obviated trademark will be regarded as ¡§arbitrarily altering a trademark or affixing thereto a note¡¨, to run the risk of application of Article 57(1) of Trademark Law, if through the omission of the element, e.g. a word, there occurs a registered similar trademark, although such chance is slim if a regular trademark watch is conducted. The modified logo might invite the application of Article 57(2) of the Trademark Law providing ¡§the trademark having not been used or being discontinued from use for three years without a due cause¡¨ since it might be controversial by any potential challenger as to whether or not the use of the modified new logo can be regarded as the use of the protected company logo. The final decision will be uncertain and uncontrollable. ¡@ |
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Miscellanies It is necessary to supplement the priority document(s), a certified copy of corresponding foreign trademark application to the Intellectual Property Office within three months after filing. According to the recent practice here, an applicant with Hong Kong nationality applies to rules concerning applications from Mainland China and needs also additionally submit the notarized Certificate of Incorporation with the Intellectual Property Office for an application. It will, however, be proper to supplement them in thirty days following the filing date. Each class includes more than 10 subgroups to about 50 subgroups, and the computer search can only be conducted on the subgroup basis. If a client could point out the specific goods items, we can accurately limit the subgroups to be conducted, and thus reduce the service fee. ¡@ |
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