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.