Disposition of refusal; time limit on request of restriction of goods or services, amendment to reproduction without substantial change, division and disclaimer

An application for trademark registration shall be refused if it is held, after examination, that under Paragraph 1 or 3 of Article 29, Paragraph 1 or 4 of the preceding paragraph, or Paragraph 3 of Article 65, the trademark shall not be registered.

Before rendering a disposition of refusal pursuant to the preceding paragraph, a written notice stating grounds for refusal shall be given to the applicant, who may make observations on the intended refusal within the prescribed period.

Any restriction of the designated goods or services, amendment to the reproduction of a trademark which does not substantially change such trademark, division of an application for registration, or disclaimer shall be requested before the disposition of refusal is rendered.

Grounds for refusal of registration: devoid of distinctiveness; disclaimer

A trademark shall not be registered if it is devoid of distinctiveness in any of the following:

(1) consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services;
(2) consisting exclusively of the generic mark or term for the designated goods or services; or
(3) consisting exclusively of other signs which are devoid of any distinctiveness.

Subparagraph 1 or 3 of the preceding paragraph shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant.

Where the reproduction of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of the trademark rights, the applicant shall state that he/she disclaims any exclusive right to such element. Such trademark without disclaimer shall not be registered.

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Other grounds for refusal of registration

A trademark shall not be registered in any of the following:
(1) being exclusively necessary for the goods or services to be functional;
(2) being identical with or similar to the national flag, national emblem, national seal, military flags, military insignia, official seals, or medals of the ROC, or the state flags of foreign countries, or the armorial bearings, national seals or other state emblems of foreign countries communicated by any member of the WTO under Paragraph 3 of Article 6ter of the Paris Convention;
"(3) being identical with the portrait or name of Dr. Sun Yat-Sen or of the head of the state;
(4) being identical with or similar to the mark of a government agency of the ROC or an official exhibition held thereby, or the medal or certificate awarded thereby;
(5) being identical with or similar to the armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations or well-known domestic or foreign institutions undertaking businesses for public interests, and hence being likely to mislead the public;
(6) being identical with or similar to official signs and hallmarks indicating control and warranty adopted by the domestic or foreign countries, and being designated to the identical or similar goods or services;
(7) being contrary to public policy or to accepted principles of morality;
(8) being likely to mislead the public as to the nature, quality, or place of origin of the goods or services;
(9) being identical with or similar to a geographical indication for wines or spirits in the ROC or a foreign country, and being designated to goods that are identical with or similar to wines or spirits, where that foreign country concludes with the ROC an agreement, or accedes to an international treaty, to which the ROC also accedes, or has reciprocal recognition with the ROC of protection of geographical indications for wines or spirits;
(10) being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper;
(11) being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application;
(12) being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application;
(13) containing another person’s portrait or well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application;
(14) containing the name of a well-known juridical person, business or any group, and hence there exists a likelihood of confusion on the relevant public, unless the said juridical person, business or group consents to the application; or
(15) being an infringement of another person’s copyright, patent right, or any other right, where a final judgment of the court has been rendered, unless the said person consents to the application.

The determination of a geographical indication, well-known trademark/mark, and earlier used trademark as prescribed in Subparagraph 9 and Subparagraphs 11 to 14, respectively, of the preceding paragraph shall be based on the facts at the time of filing.

Subparagraphs 4, 5 and 9 of Paragraph 1 of this Article shall not apply if the applicant is a government agency or related institution.

Paragraph 3 of the preceding article shall apply mutatis mutandis to the ground for refusal prescribed in Subparagraph 1 of Paragraph 1.

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Revocation procedure

The Registrar Office shall serve a copy of an application for revocation on the proprietor of a registered trademark, who may make observations to the revocation within the prescribed period; where the proprietor files the observations, the Registrar Office shall serve a copy of the observations on the applicant, who may comment on the observations of the proprietor within the prescribed period. An application for revocation may be dismissed directly if the application is devoid of any concrete facts and evidence or based on obviously groundless claims.

Where a copy of an application for revocation against a registered trademark on the ground prescribed in Subparagraph 2 of Paragraph 1 of Article 63 has been served on the proprietor of such trademark, such proprietor shall furnish proof of his/her use. Such registration may be revoked directly if the proprietor fails to make observations within the prescribed period.

Where the trademark registration was revoked on the ground prescribed in Subparagraph 1 of Paragraph 1 of Article 63, a trademark which is identical with or similar to the revoked trademark in relation to goods or services which are identical with or similar to those for which the revoked trademark is designated shall not be applied for registration by the former proprietor of the revoked trademark or transferred or licensed to such former proprietor within three years from the day following the date of revocation; the aforementioned shall also apply to the circumstance that the trademark right has been abandoned before the disposition of revocation rendered by the Registrar Office.

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