The Greater China IP Updates – August 2023

Taiwan Intellectual Property Office Drafts Amendment to the Examination Guidelines on Disclaimers for Trademark Applications

The Taiwan Intellectual Office announced on May 2, 2023, that it made a draft amendment to the Examination Guidelines on Disclaimers.  Here are some of the main points:

1. For non-distinctive parts of a trademark, a disclaimer will be necessary even if the combination of words created by the applicant seems original but is just a description of the trademark’s designated goods or services. By issuing a disclaimer for the non-distinctive part, consumers and competitors will understand clearly that the non-distinctive part is not being claimed.
2. Other non-distinctive signs, such as surnames, slogans, idioms, and popular terms that are not descriptive, are often expected by businesses to potentially be part of their exclusive rights. If judged to be non-distinctive, however, such signs should generally be disclaimed.
3. Numbers larger than two, model numbers, and symbols that have been determined to be non-distinctive should be disclaimed. However, if the meaning of the numbers (such as specifications, quantities, time or era) is clear and specific to the product and commonly used in the industry, and if it can be determined that they do not raise any doubt about the scope of the trademark’s rights, they do not need to be disclaimed.
4. Where the position, font size, or proportion of the non-distinctive part of a trademark may affect the applicant’s judgement as to whether to claim the trademark rights to that part, a disclaimer for that part should be made.
5. If there is sufficient evidence during examination to determine that a non-distinctive element is commonly used by the industry and the public to describe the designated goods or services, and is a direct and obvious description of the goods or services, and that neither the trademark owner nor the industry will have doubts about the scope of the trademark’s rights, a disclaimer will not be required.

Amended Enforcement Rules of the Taiwan Patent Act

Rule 28 of the Enforcement Rules of the Patent Act became effective on May 1, 2023.  Now, when filing a divisional invention patent application, if the specification of the divisional application is not identical to its original application, a marked-up version which indicates the differences between the specifications of the original and divisional applications should be submitted, and an explanation concerning the differences may be provided.  Here are some of the key points:

1. In the marked-up version indicating the differences between the specifications of the original and divisional applications, any deletion should be highlighted by strikethroughs and any addition should be highlighted by underlines.
2. If only a fraction of the specification of the divisional is different from the original application, the marked-up version may merely include the pages that involve the differences.
3. The marked-up version should be submitted even if only a typographical error is corrected in the specification of the divisional application. However, where the original and divisional applications only differ in the title of invention, the marked-up version is not required.
4. Where the marked-up version is required but not submitted by the applicant, the divisional application will still be accepted by the Taiwan Intellectual Property Office. However, if the examiner determines that the specifications of the original and divisional applications are not consistent, the examiner will notify the applicant to file a supplement within a specified time limit.

Taiwan Reminds Applicants about Recordal Requirements

The Taiwan Intellectual Property Office (TIPO) recently issued a reminder of what documents and fees are required when an applicant wants to record any change of information of the applicant or inventor as follows:

1. As well as filling in the application sheet, when an applicant wants to register a change of attorney, a Power of Attorney with an official fee of NT 300 dollars is required.
2. To change the applicant’s name, a supporting document that reflects the name change, along with an official fee of NT 300 dollars is required.
3. If a foreign legal person intends to change their name, a supporting document issued by the foreign government or an affidavit signed by the applicant bearing all legal responsibilities plus a fee of NT 300 dollars is required.
4. If an applicant or a patentee wants to change their signature or seal, they must fill in an application sheet that includes the original and new forms of signature or seal and pay a fee of NT 300 dollars. If the original seal has been lost, the registrant should submit an affidavit as a supporting document.
5. If the inventor’s name needs to be changed, a supporting document that reflects the name change as well as a fee of NT 300 dollars is required.
6. To add an inventor, documents of proof and a consent form from each inventor named in the application and the newly added inventor as well as an official fee of NT 300 dollars is required.
7. To delete an inventor, a statement from the deleted inventor declaring that he or she is not an inventor in this case as well as a fee of NT 300 dollars is required.

Except for filling in the application sheet, changing the applicant’s address, changing the company’s legal representative, and changing the applicant’s or inventor’s nationality do not require any supporting documents