With the abolition of the “Guidelines for Cosmetics Containing Medical and Toxic Pharmaceuticals” by the Ministry of Health and Welfare and the amendment of “Cosmetic Hygiene and Safety Act” pertaining to “specific purpose cosmetics,” changes to the listed-acceptable classification of goods as published by the Taiwan Intellectual Property Office (TIPO) will be made and take effect from January 1, 2021. Please refer to the following for more details:

Starting from January 1, 2021, goods in relation to or specified as “medicated toiletry preparations; medicated shampoos; medicated mouth washes” classified in Class 5 according to The Nice Classification (NCL) are no longer accepted by the TIPO. 
 

1.The business entity who would like to apply for trademarks designating “toiletry preparations; after-shave lotions; shampoo; preparations of mouth washes” in Class 5 in the future should be aware of the fact that goods classified in Class 5 are in the nature of pharmaceuticals, and thus should be specified as “~ for medical purposes” in order to distinguish them from other goods.

In addition, when the trademark is put to actual use by the owner, relevant law & regulations enacted by the competent authority Ministry of Health and Welfare, and Taiwan Food and Drug Administration (FDA) must be followed
(please see: https://www.fda.gov.tw/ENG/index.aspx).

2.In accordance with the amendment of the “Cosmetic Hygiene and Safety Act,” all the business entities with registrations designating goods in relation to or specified as “medicated toiletry preparations; medicated shampoos; medicated mouth washes” are prohibited from using such descriptions on the goods during the course of transaction.
 

On the other hand, Article 5 Paragraph 2 of the “Cosmetic Hygiene and Safety Act” stipulates that:

“For the manufacturing or import of specific purpose cosmetics designated by the public announcement of central competent authority, an application for registration shall be filed with the central competent authority. No manufacturing or import shall be allowed until a license is approved and issued.”

 

Tai E’s analysis and relevant recommendations

Under local practices, although Taiwan adopts the International Nice Classification to divide all the goods/services into 45 different classes, not all the terms listed in the Nice Classification are acceptable to the TIPO.

In these cases, after amendments of the local regulations, changes to the listed-as-acceptable descriptions of goods in Class 5 should be abided by, or the Examiner-in-charge will issue an Official Action requesting the applicants’ amendments of goods.

Below is a table containing the details of the non-acceptable descriptions and the relevant alternative terms starting from Jan. 1, 2021:
 

Non-acceptable terms in Class 5	Relevant acceptable description in Class 5
medicated toiletry preparations	toiletry preparations for medical purposes;  after-shave lotions for medical purposes
medicated shampoos	shampoo for medical purposes
medicated mouth washes	mouth washes for medical purposes

Besides, as the TIPO has been adopting the “Fast-Track” trademark examination mechanism from May 1 this year, we suggest that the applicant file new applications designating the same descriptions of goods listed by the TIPO on its official website so as to reduce the official fee and shorten the time for examination.

If you should have any query or need any further information before filing a new trademark in Taiwan, please do not hesitate to contact Tai E via e-mail at ipdept@taie.com.tw. 
 
Reference is made to the contents either in Chinese/English contained in the following hyperlink published on the TIPO’s online website: 
 
1.https://www.tipo.gov.tw/tw/cp-85-883530-82043-1.html 
2.https://www.tipo.gov.tw/en/cp-282-875463-fa379-2.html 
3.https://www.tipo.gov.tw/en/cp-312-183381-b40f1-2.html