The Taiwan Intellectual Property Office (IPO) published the new Examination Guidelines for Trademark Disclaimers (“Guidelines”) on May 31, 2023, and the new Guidelines shall enter into force on August 1, 2023. Below is a summary of the key amendments and Wisdom Suggested Strategies.
1. Determination of whether a disclaimer is required
The new Guidelines made significant amendment to the determination of the necessity of disclaimers, expressly stipulating that whether a disclaimer is required depends on whether the non-distinctive elements in the trademark is likely to “give rise to doubts as to the scope of the right.”
The key principles are:
(1) When a non-distinctive element coined by the applicant or less commonly used by businesses is a combination of words that is descriptive of the goods or services, and the applicant may mistakenly believe they may claim the exclusive right to the element and the consumers and competitors may have doubts about whether such element has acquired trademark right, then there is need for a disclaimer. Read more