Relevant Regulations of the Trademark System of Both Countries
- Trademark distinctiveness
Article 29 of the Trademark Act of Taiwan stipulates: “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.” Article 11 of the Trademark Law of China stipulates: “None of the following marks may be registered as trademarks: (1) the mark which bears only the generic name, design, or model number of the goods concerned; (2) the mark which only directly indicates the quality, main raw materials, function, use, weight, quantity or other features of the goods; and (3) marks that otherwise lack any distinctive feature. Any mark mentioned in the preceding paragraph may be registered as a trademark if it has acquired distinctive features through use and is readily distinguishable.” From the above regulations governing trademark distinctiveness of both countries, we can conclude the following points:
(1)
What is distinctiveness? The main purpose of trademarks is to identify the source(s) of goods or services. A sign unable to indicate or distinguish the source(s) of goods or services does not carry the trademark function. In other words, distinctiveness aims to indicate the source(s) of goods or services and to distinguish them from the goods or services of others. Hence, “a sign describing only the nature of goods or services cannot be registered as a trademark” is mentioned in the trademark acts of both countries. For example, “Arabica beans” used on coffee drinks is only a description of the source of coffee beans: Arabica. Additionally, signs consisting of common names are not allowed for trademark application. For example, “aspirin” is a drug name commonly used on the relevant medications by all pharmaceuticals.
(2)
However, have you discovered that some signs without inherent distinctiveness are allowed for trademark registration? A sign proven to be able to let the relevant consumers identify and distinguish its source may be allowed for trademark registration for its acquired distinctiveness. This is also mentioned in the trademark acts of both countries. For example, “Tonight, I want some…” is a common advert slogan. However, after the applicant submitted a large quantity of evidence to support its trademark functions, it was allowed for trademark registration.
(3)
Additionally, there is one regulation governing distinctiveness of both countries is very different. That is, Taiwan’s trademark act allows for registration of indistinctive trademarks with disclaimers of exclusive rights, while no such regulations are stipulated in China’s trademark act. In practice, although the Chinese government does not stipulate the inadmissibility of that method, some cases were allowed for trademark registration with disclaimers of exclusive rights during the appeal. As no regulations have been stipulated, it is hard to acquire the trademark right through such a method. Overall, although there is no big difference in the regulations governing distinctiveness of both countries, there are slight differences in practice, such as the disclaimer of exclusive use. Readers should keep this in mind.
- Trademark confusion
Regarding the similarity and confusion of trademarks, given that indicating and distinguishing the source(s) are the major functions of trademarks, they have long been critical arguments in the practices of both countries. Hence, there are more arguments in the legislation compared to other forms of arguments. For example, identical or similar to the national flag/national emblem, identical or similar to the logo of government agencies or international organizations, identical or similar to the certification mark of official quality control to confuse consumers of quality, place of origin, and so on. All of them are absolute grounds for refusal of registration, while confusions with the trademark of others are relative grounds for refusal of registration. Here are some examples of confusions as relative grounds for refusal of registration.
(1)
Article 30, paragraph 1, subparagraph 10, of the Trademark Act of Taiwan stipulates: “A trademark shall not be registered in any of the following: (10) being identical or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical 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…” This is one of the most quoted articles for trademark application practices in Taiwan. Despite its semantical complexity, it mainly consists of three sections: (1) being identical or similar to another person’s registered or earlier filed trademark; (2) use on identical or similar goods or services; and (3) a likelihood of confusion on relevant consumers. To determine if a trademark confuses consumers, the government of Taiwan has established the Criteria for Review of Trademark Confusions for judgement of each case.
(2)
Article 30 of the Trademark Law of China stipulates: “Where a trademark, for the registration of which an application is made, that does not conform to the relevant provisions hereof or that is identical or similar to the trademark already registered by another person or a trademark which is given preliminary examination and approval for use on the same kind of goods or similar goods, the Trademark Office shall reject the application and shall not announce that trademark.” There is no big difference between this article and that of Taiwan’s, both focusing on being identical or similar to a trademark and using in identical or similar goods or services. The biggest difference is that “confusion” is not included in China’s trademark act. Why? In fact, the confusion requirements are also included in the China’s trademark act, simply in the part for infringement. In other words, when a trademark under application is used on identical or similar goods or services, the Chinese government may reject the registration of such a trademark.
(3)
Additionally, the author wishes to ask a question: As the current regulations governing confusion of both parties usually emphasize “being identical or similar to a registered or earlier filed trademark”, will it be possible that a trademark with a later application or registration date confuses consumers with the registered or earlier filed trademark with powerful marketing resources? The answer is positive. If the context of the regulations focuses on “forward confusion”, the above question is an example of “reverse confusion”. However, the Supreme Administrative Court of Taiwan has ruled out the applicability of “reverse confusion” and respects the first-to-file principle. In spite of adopting the first-to-file principle without explicit stipulation, the Chinese government affirms that “reverse confusion” is one kind of confusions in practice. The above presents the criteria for and the likes and dislikes in the determination of similarity and confusion of trademarks of Taiwan and China.
