The Taiwan Intellectual Property Office has revised the Examination Criteria on Likelihood of Confusion after referring to the guidelines of the EUIPO, JPO, the USPTO, and the judicial practice in Taiwan. The aim is to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. The key points are:
- Regarding similarity between trademarks, the revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.
- Regarding the similarity of goods and services, an additional criterion, points of sale, was included in the list of determining factors for the degree of similarities between goods and services. Definitions of goods/services that are considered in competition, complimentary, or auxiliary/ancillary in relation to specific other goods or services, and supplemental information pertaining to the relations between the goods and their components, raw materials, or semi-finished products, respectively, were also incorporated into the revision.
- Several determining factors were modified, such as whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy, whether the trademark applicant possesses a bona fide intent, and the factors for being obviously improper, are part of the proviso of Article 30 of the Trademark Act.