Since the procedures and examination requirements for registering a certification mark, collective membership mark, or collective trademark are different from those of a regular trademark, it is necessary to add and amend contents and case studies to further clarify the examination principles. The main amendments are as follows:

1.To reflect the structure of its contents, the amended document is renamed "Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks."

2. A separate chapter on "geographical marks" is added to promote and explain the application and registration mechanism for a "geographical certification mark" and a "geographical collective trademark" in Taiwan.

3. Regarding a declaration not to carry on the business of certified goods or services from the applicant of a certification mark:

(1) It is clearly stipulated that the applicant shall not obtain registration of any trademark having exactly the same scope as certified goods or services; otherwise, it can be formally determined that the applicant has carried on the business of certified goods or services, which violates the obligation of neutrality and is inconsistent with the content of the declaration.

(2) The applicant may apply for a registration to obtain trademark rights for goods or services other than the business of certified goods or services if there are no other circumstances that prohibit registration.

4. The regulations governing the use of a certified mark shall clearly specify the name of goods or services to be certified:

(1) On filing a certification mark, the goods or services described under “certification contents” can be presented as general terms, such as food, electrical appliances, etc. However, to clearly correspond to the conditions of use specified in the regulations governing the use and to facilitate filing certified marks by third parties, referring to foreign practices, the name of goods or services to be certified shall be designated in accordance with the classification principles of the Nice International Classification, and shall be attached as an appendix to the regulations governing the use for the convenience of publication.

(2) The "certified goods or services" shall be consistent with the goods or services indicated under “certification content” in the regulations governing the use as well as in the application form, and shall not exceed the scope of the certified goods or services stated under “certification content.”

5. The filing process for certification marks, collective membership marks, and collective trademarks, and the principles for determining the applicability of the proviso “obviously improper" under Article 30, Paragraph 1, Item 10 of the Trademark Law are illustrated by examples and further explained.

6. Case studies are added and amended to support the Examination Guidelines and facilitate the reader's understanding.

(Translated and summarized from the news announced on the website of the Taiwan Intellectual Property Office)

https://www.tipo.gov.tw/tw/cp-86-913825-14d82-1.html
https://www.tipo.gov.tw/tw/cp-86-913048-735ba-1.html

* Manager of Business Development Division at Tai E International Patent & Law Office