JURISDICTION REPORT: TAIWAN
NEW EXAMINATION GUIDELINES FOR RETAIL SERVICES
Crystal Chen and Yiling Liu Tsai Lee & Chen
In December 1997, the Taiwan Intellectual Property Office (TIPO) began accepting retail services as allowable service marks. Te first related Examination Guidelines in this regard were put into practice in 1998. On February 1, 2011, new Guidelines for the Examination of Retailing Services were launched.
Te new guidelines provide specific ‘yes or no’ guidance on ambiguous terms that are frequently designated to seek protection for retail services. Tey aim to avoid wasting examination manpower on overly itemised lists of services, or on listed services that are not relevant to the applicant’s actual business. Further, owing to the complexity in cross-referenced similarity searches, the new guidelines elaborate examination principles to determine similarity. Tis amendment therefore greatly clarifies the remaining confusion over examination standards for determining trademark similarity for retail services.
Te main points of the new guidelines are:
• Definition of retail services: Although a retail service provider can also be the source or manufacturer of products at the retail store, a trademark for a retail service protects the entire labour and services provided during the collection and selection of goods. It therefore differentiates the retail service from general goods displayed for sale.
• Designation of retail services:
Retail services are categorised into ‘general’ and ‘specific’ services. However, the terms ‘retailing service for general merchandise’ or ‘retailing service for specific merchandise’ are not allowed, as neither one is specific enough to determine the scope of a trademark.
Department stores, supermarkets, mail-order services and online shopping services are all acceptable as retailing services for general merchandise. Since they provide a variety of goods on either physical or virtual platforms, there is no need to list each item available for retail. Examples that belong to retail services for specific merchandise are ‘direct-marketing retailing services for cosmetics’ and ‘retailing services for electronic appliances’.
Under the guidelines, in cases where applicants list both retailing services for general and specific merchandise in the application, the examiner tends to request the deletion of the retailing services for specific merchandise. Tis is because using the same trademark to represent services of different distribution channels is deemed uncommon in the marketplace, unless the applicant can prove that its actual business indeed encompasses both types of retail service.
60 World Intellectual Property Review March/April 2011
• Types of business that do not belong to retailing services:
Services that do not comply with the nature of retailing services are explained in the new guidelines, such as ‘products customisation services’, which do not necessarily display products for general consumers to purchase, ‘logistics centers’, which do not function to sell goods, and ‘telephone shopping’, which does not provide displayed products for consumers to browse.
• Similarity between retail services and other goods and services:
Although the determination of similarity does not necessarily lead to the likelihood of confusion, understanding the similar/dissimilar relationship between retail services and other goods and services can help the applicant to bypass registration hindrances at an early stage, aſter a trademark clearance search. Te comparison chart below demonstrates a basic relationship of similarity between the retail services in discussion:
RS for general merchandise
RS for general merchandise similar RS for specific merchandise not similar
Specific goods Other services not similar not similar • Trademark use for retailing services
A trademark for retail services is an indicator of the origin of services, rather than of goods. As such, directly marking the trademark will not be deemed a proper use for retail services. Trademark owners may provide marketing materials for each service designated as the proof of use.
Lastly, if a trademark is designated for retail services for both general and specific merchandise, the proprietor of the mark shall provide sufficient evidence of use for each service listed, if the actual use of the mark be questioned by another party.
Crystal J. Chen is a lawyer and partner at Tsai Lee & Chen. She can be contacted at:
cjchen@tsailee.com.tw
Yiling Liu is a trademark attorney and chief of the trademark section at Tsai Lee & Chen. She can be contacted at:
trademark@tsailee.com.tw
www.worldipreview.com
RS for specific merchandise
not similar
not similar in principle, but possibly similar
not similar in principle, but possibly similar
not similar in principle, but possibly similar
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