Chapter II Trademark
Section II Examination and Acceptance
Grounds for refusal of registration: devoid of distinctiveness; disclaimer
A trademark shall not be registered if it is devoid of distinctiveness in any of the following:
(1)Consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services;
(2)Consisting exclusively of the generic mark or term for the designated goods or services; or
(3)Consisting exclusively of other signs which are devoid of any distinctiveness.
Subparagraph 1 or 3 of the preceding paragraph shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant.
Where the reproduction of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of the trademark rights, the applicant shall state that he/she disclaims any exclusive right to such element. Such trademark without disclaimer shall not be registered.
Other grounds for refusal of registration
A trademark shall not be registered in any of the following:
(1)Being exclusively necessary for the goods or services to be functional;
(2)Being identical with or similar to the national flag, national emblem, national seal, military flags, military insignia, official seals, or medals of the ROC, or the state flags of foreign countries, or the armorial bearings, national seals or other state emblems of foreign countries communicated by any member of the WTO under Paragraph 3 of Article 6ter of the Paris Convention;
(3)Being identical with the portrait or name of Dr. Sun Yat-Sen or of the head of the state;
(4)Being identical with or similar to the mark of a government agency of the ROC or an official exhibition held thereby, or the medal or certificate awarded thereby;
(5)Being identical with or similar to the armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations or well-known domestic or foreign institutions undertaking businesses for public interests, and hence being likely to mislead the public;
(6)Being identical with or similar to official signs and hallmarks indicating control and warranty adopted by the domestic or foreign countries, and being designated to the identical or similar goods or services;
(7)Being contrary to public policy or to accepted principles of morality;
(8)Being likely to mislead the public as to the nature, quality, or place of origin of the goods or services;
(9)Being identical with or similar to a geographical indication for wines or spirits in the ROC or a foreign country, and being designated to goods that are identical with or similar to wines or spirits, where that foreign country concludes with the ROC an agreement, or accedes to an international treaty, to which the ROC also accedes, or has reciprocal recognition with the ROC of protection of geographical indications for wines or spirits;
(10)Being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper;
(11)Being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application;
(12)Being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application;
(13)Containing another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application;
(14)Being identical with or similar to the name of a well-known juridical person, business or any group, and hence there exists a likelihood of confusion on the relevant public, unless the said juridical person, business or group consents to the application; or
(15)Being an infringement of another person’s copyright, patent right, or any other right, where a final judgment of the court has been rendered, unless the said person consents to the application.
The determination of a geographical indication, well-known trademark/mark, and earlier used trademark as prescribed in Subparagraph 9 and Subparagraphs 11 to 14, respectively, of the preceding paragraph shall be based on the facts at the time of filing.
Subparagraphs 2, 4, 5 and 9 of Paragraph 1 of this Article shall not apply if the government agency or related institution is the applicant or consents to the application.
Where the reproduction of a trademark contains an element that is functional as prescribed in Subparagraph 1 of Paragraph 1, such trademark shall not be registered without using broken lines to represent such element. Where such element cannot be represented by using broken lines, it shall not be registered if the applicant does not state that such element is not a part of the trademark.
Disposition of refusal; time limit on request of restriction of goods or services, amendment to reproduction without substantial change, division and disclaimer
An application for trademark registration shall be refused if it is held, after examination, that under Paragraph 1 or 3 of Article 29, Paragraph 1 or 4 of the preceding paragraph, or Paragraph 3 of Article 65, the trademark shall not be registered.
Before rendering a disposition of refusal pursuant to the preceding paragraph, a written notice stating grounds for refusal shall be given to the applicant, who may make observations on the intended refusal within the prescribed period.
Any restriction of the designated goods or services, amendment to the reproduction of a trademark which does not substantially change such trademark, division of an application for registration, or disclaimer shall be requested before the disposition of refusal is rendered.
Disposition of acceptance; payment of registration fee; relief measure of failure to pay
An application for trademark registration shall be accepted if, after examination, none of the grounds for refusal prescribed in Paragraph 1 of the preceding article is found to exist.
A trademark been accepted for registration shall be published for registration and a trademark certificate shall be issued, provided that the registration fee has been paid by the applicant within two months from the day following the date of the service of the disposition. Where the said fee remains unpaid by the end of the prescribed period, a trademark shall not be published for registration.
Where an applicant has unintentionally failed to pay the fee within the period prescribed in the preceding paragraph, the applicant may pay double within six months from the day following the date on which the prescribed period expires, in which case the Registrar Office will publish the registration. However, this shall not be applied if an application for trademark registration filed or rights of a trademark obtained by a third party during such period would be affected.