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Taiwan Trademark 101 Series,   Distinctiveness   Managing Partner Dr. Kuohua Fan | Senior Associate James Y. Chang 

1. Trademarks Distinctiveness

The main function of a trademark is to identify the source of goods or services. If a sign cannot identify and distinguish goods or services, it does not have the trademark function and the registration cannot be approved. Distinctiveness is an important requirement for registration of a trademark [1] . The details of distinctiveness are as follows:

2.   Fanciful Marks

Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark [2] . Approved cases [3] :

 "GOOGLE" for search engine services

 " 震旦 " ("Aurora") for transmission services by telecommunications weighted networks

 " 普騰 " ("Proton") for television sets and stereo sets

        for cars and passenger cars.

3.   Arbitrary Mark

An arbitrary mark is a trademark that consists of a word which is used in a way that has nothing to do with its meaning. The use of the word will have nothing to do with its actual meaning. Arbitrary marks are inherently distinctive and the owner need not show secondary meaning to be entitled to protection for the mark because arbitrary marks bare no connection to the underlying goods and services [4] . Approved cases [5] :

 . " 蘋果 APPLE," " 黑莓 BlackBerry" for computers and data processors.

 " 風信子 " ("Hyacinth") for cups, bowls and dishes.

 " 向日葵 " ("Sunflowers") for solar collectors.

 " 春天 " ("Spring") for restaurant and hotel services 

    for clothing.

4.   Suggestive Trademark

A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought, imagination or perception for the consumer to reach a conclusion as to the exact nature of the goods [6] . Approved cases [7] :

 " 快譯通 " ("Quick Translation Understandable") for electronic dictionaries.

 " 一匙靈 " ("One Spoon Effective") for laundry detergents in powder form.

 " 克潮靈 " ("Resisting Humidity Effective") for dehumidifying agents.

 " 靠得住 " ("Reliable") for sanitary napkins.

 " 足爽 " ("Foot Refreshing") for medicated ointment for H.K. feet.

    for chairs, rocking chairs, desks and chairs.

5. Acquired Distinctiveness

A trademark with no distinctive character is prima facie unregistrable. However, these marks may still allowed to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade marks office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness [8] . Approved cases [9] :

 "787", a simple number, is not distinctive. However, after the applicant has long used it as a trademark in connection with airplanes and their parts and fittings, aircraft and their parts and fittings, and helicopters and their parts and fittings, such sign has caused a sufficient number of relevant consumers to recognize it as a sign identifying the source of goods and has acquired distinctiveness through use.

 "4810," the height of Mont Blanc, the highest mountain in Europe, is not distinctive. However, after the applicant has long used it as a trademark in connection with fountain pens, ball point pens, pencils, felt pens, etc., and used it extensively in the advertising media, such sign has acquired distinctiveness through use.

 "V50" for cars, trucks and all-purpose RV cars gives an impression that it is the model number of the designated goods and is not inherently distinctive. However, after the applicant has long used it, relevant consumers are able to recognize it as a sign identifying the source of certain goods, so it has acquired distinctiveness.

 "Life should be wasted on beautiful things," which is irrelevant to drinks made from tea leaves or tea, coffee, drinks made from coffee, cocoa and drinks made from cocoa, ice cream, etc., was not distinctive. However, after the applicant has long used it as a trademark in connection with aforesaid goods and used it extensively in the advertising media, such sign has acquired distinctiveness.

        is an ornamental pattern. The use of the pattern for department stores, supermarkets, etc., is not inherently distinctive. However, after the applicant has long used it as a trademark in connection with handbags, packaging bags, etc., such sign has acquired distinctiveness.



[1] Examination Guidelines on Distinctiveness of Trademarks, Enacted and promulgated on December 31, 2008 by the order of the MOEA, enforced on January 1, 2009, Amended and promulgated on April 20, 2012 by the order of the MOEA, enforced on July 1, 2012. P4-5.

[3] Ibid., Examination Guidelines on Distinctiveness of Trademarks, P6.

[5] Ibid., Examination Guidelines on Distinctiveness of Trademarks, P7.

[7] Ibid., Examination Guidelines on Distinctiveness of Trademarks, P7-8.

[9] Ibid., Examination Guidelines on Distinctiveness of Trademarks, P12-13.

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標示專利證書號的效果  The effect to mark the serial number of patent certificate / Patent Attorney Jerome Lin |Patent Engineer Meng-Xuan Lin

當專利獲准時,專利專責機關會頒給專利權人具有專利證書號的專利證書。將專利證書號標示在商品上,除了具有宣示作用之外亦具有廣告作用。一方面是向社會大眾宣示此商品具有專利權,未經專利權人同意即製造、販賣會有專利侵權問題;另一方面民眾一般認為擁有專利權的產品於技術內涵上必定有一定之水準,故又有廣告宣傳的作用。而將專利證書號標示在商品上,是專利權人的權利還是義務,各國有不同的見解。

When such patent is granted, the Patent Authority shall mark the serial number of patent certificate on his/her patented article. Such serial number of patent certificate would be marked on products for declaration and advertisement purposes. On the other hand, it is to declare the public that such product has its patent right, the patentee of a utility model shall have the exclusive right to preclude other persons from manufacturing, offering for sale, selling, using, or importing for such purposes such patented products without his/her prior consent. In addition, the general public believes that if such products have its patent right; it generally means that such product has its standard quality. This is another way of advertisement. Therefore question arises as to whether to mark the serial number of patent on his/her patented article is considered as its right or obligation, every country has its own different interpretations.

美國專利法第287條規定為專利標示是專利權人的義務,並且是請求損害賠償的前提要件;日本特許法第187條僅訓示性「勸導」專利權人應努力在產品上進行專利標示,未揭示專利產品無專利標示會有何後果;英國專利法第62條第1項以及澳洲專利法第187條亦將專利標示作為侵權行為人是否知悉專利權存在的要件(註[1]);大陸專利法第17條第二項規定「專利權人有權在其專利產品或著該產品的包裝上標示專利標示」,故推定專利標示於大陸是專利權人的權利而非義務。

United States Patent Law Article 287 indicates that the patent label is considered as patentee’s patent right and has grounds to seek for compensation for its damages. Japan Patent Law Article 187 only indicates that a patentee, exclusive licensee or non-exclusive licensee shall make efforts to place a mark to indicate that the product or process is patented. United Kingdom Patent Act Article 62, Paragraph 1 and Australian Patent Law Article 187 indicates that in proceedings for infringement of a patent damages shall not be awarded, and no order shall be made against a defendant or defender who proves that at the date of the infringement has was not ware, and had no reasonable grounds of supposing, that the patent existed. China Patent Law Article 17, Paragraph 2 indicates that “an inventor or designer shall have the right to state in the patent documents that he/she is the inventor or designer. The patentee shall have the right to have his patent mark displayed on the patented products or the package of such products.” Therefore, the trademark mark is considered as patentee’s right but not obligation.

依照我國現行專利法第98條規定,專利權人應於專利物上標示專利證書號,若因物品過小或形狀怪異等因素而無法標示於物品上時,應於標籤、包裝或其他組已引起他人注意的方式標示,若未標示,請求損害賠償時,應舉證證明侵害行為人明知或可得而知為專利物。

According to Taiwan’s Patent Act Article 98, an invention patentee shall mark the serial number of patent certificate on his/her patented article or the packaging thereof, unless the item is too small or with odd shapes that it is not feasible to mark the serial number of patent certificate. In case of failure to affix such marking, no claim for damages shall be allowed, except in the case that the infringer has known, or should have known as proved by facts, the existence of the patent.

承上段所述,專利標示在我國並非義務,亦非請求損害賠償的前提要件,亦未將專利標示列為侵權行為人是否知悉專利權存在的要件。為避免限縮專利權人請求損害賠償的權益以及減輕其負擔,我國現行專利法免除了於物品上標示專利證號的專利權人於專利侵權人的舉證責任,用以鼓勵專利權人將專利證書號標示在商品上讓大眾知悉該產品為專利產品。雖然我國目前核准之專利皆會公告在專利公報上,但並非所有人都會定期閱讀公報,亦並非每個人都能輕易瞭解具有一定格式的專利說明書以及專利申請範圍,透過專利物品的專利標示可以讓人較容易瞭解該專利權所在的技術領域。

From the above, we can know to mark the serial number of patent certificate is not considered obligatory and shall not claim for damages. Whether prior to filing, such a patent application has become known to the public, in order to prevent restraining its claim for damages, there is no burden of proof on the plaintiff where an invalidation action instituted involves the trial proceedings. This is to promote an invention patentee to mark the serial number of patent certificate on his/her patented article or the packaging thereof. Even though the Patent Authority would publish our granted patent in the Patent Gazette, however people in public wouldn’t read such Patent Gazette on regular basis, nor may necessarily understand its patent specification’s format and the claims and the drawings of the application. By marking the serial number of patent would make it easier for the public to understand the technical field of its patent.

註:

[1] 專利法逐條釋義第314頁。Trademark Act Interpretation, page 314.

參考資料:

專利法第98條 (Trademark Act Article 98)

專利法逐條釋義(Trademark Act Interpretation)

經濟部智慧財產局(Intellectual Property Office) https://www.tipo.gov.tw/mp.asp?mp=1

與貿易有關之智慧財產權協定(Agreement on Trade-Relted Aspects of Intellectual Property Rights,TRIPS)

專利實務論第6版 冷耀世編著Patent Practice, 6th edition by Yao-Shi Leng.

專利法案例式 修訂第五版 林洲富著Patent Law Cases, 5th edition by Chau-Fu Ling. 

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