During the past two decades, Taiwan Trademark Act was revised in 2003 to provide protection on three-dimensional, single color and sound trademarks, and further revised in 2012 to expand the scope of protection for more types of non-traditional trademarks. Namely, per Taiwan Trademark Act implemented on July 1, 2012, a trademark shall refer to any sign with distinctiveness which enables consumers to recognize and distinguish the goods or services.
It may consist of, but not limit to, word, design, symbol, color, three-dimensional shape, motion, hologram, sound, or any combination thereof. Basically, the requirements of distinctiveness, non-functionality and representation for non-traditional trademarks are the same to those of traditional or conventional trademarks, but when filing a non-traditional trademark application, the applicant needs to provide not only the specimen of the trademark, but also the description and sample of the trademark.
Since the Act stipulates that a trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible, Taiwan Intellectual Property Office (TIPO) has promulgated Examination Guidelines on Non-Traditional Trademark, in order to elucidate and exemplify as how the non-traditional trademarks, especially those of non-visual types, can meet such requirement of representation, and also for examiners to follow when handling the prosecution of non-traditional trademark applications and identifying their scope of protection right.
Currently, the non-traditional trademark applications in Taiwan are mainly 3D, color and sound trademarks, and their filing statistics published by TIPO for recent years are as follows:
| Forms of Trademark | 2014 | 2015 | 2016 |
|---|---|---|---|
| 3D | 116 | 96 | 113 |
| Sound | 13 | 5 | 7 |
| Color | 21 | 15 | 19 |
| Hologram | 2 | 2 | 1 |
| Motion | 15 | 2 | 6 |
| Others | 6 | 3 | 7 |
| Total | 173 | 123 | 153 |
TIPO’s examination guidelines already included the contents of the above mentioned 3D, sound, color, hologram and motion trademarks, and now added two other forms of non-traditional trademarks, namely, continuous pattern trademark and scent trademark, in the revised guidelines effective from September 12, 2017. Below are the representations of some non-traditional trademarks as outlined in the guidelines.
- For three-dimensional trademark, one drawing of the trademark in one single perspective view or a maximum of six drawings of the trademark in different perspective views may be represented.
- For sound trademark, it may be represented by musical staff notations or numerical musical scores, but if not available, then by a written explanation of the sound, and to be also furnished by an electronic data carrier (e.g. CD) bearing such sound, which conforms to the format as published by TIPO.
- For motion trademark, its representation may be the varying process of moving images in a series of not more than six still views depicting the movement.
- For hologram trademark, one perspective drawing is required for a hologram of one single representation, and a maximum of four perspective drawings are required for a hologram of different presentations.
- For continuous pattern trademark, it may be represented in a manner of constitutional or compositional elements (of design, numeric, alphabet, etc.) and continuous arrangement in order to show the repetitive pattern.
- For scent trademark, its representation shall be the written explanation of the scent, e.g. in the description of a smell that exists in nature or has been recognized in the commercial market. Its explanation must be clear and objective, and readily understood by a consumer who possesses normal skill or knowledge
In addition, the applicant may use broken lines to show the manner, placement or context of the trademark when it is used in the designated goods or services, but the portion shown by the broken lines is not protected by the trademark registration.
