18 January, 2018
Article 18 of the Trademark Act provides that any signs with distinctiveness which can identify and distinguish the origin of the goods or services can be an object for registration and protection.
Such signs are not limited to those listed in the text of said Article, to wit: words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, and any combination thereof sensible by visual or auditory sensation. Any other sign that may be perceived by the sense of smell, touch or taste can also be registered for trademark protection so long as it meets the distinctiveness requirement.
By virtue thereof, the Ministry of Economic Affairs renamed the “Examination Criteria on the Trademarks of Three-dimensional Shapes, Colors and Sounds” to “Examination Criteria on Non-traditional Trademarks”, and increased the types of signs acceptable for trademark examination to include repeating patterns, scents (odors), positions, etc. Accordingly, the TIPO will examine the following three aspects when examining untraditional marks:
1) the way of expression: design, description and specimen:
2) the distinctiveness, and
3) the non-functional nature. (Kevin Wei, Trademark Department)
The IP Court found that the mark ROWANA (with design) was similar with the trademark RIMOWA (with design)
The IP Court affirmed TIPO’s decision to revoke the registration of the mark 
The IP Court found that: (1) the Roman elements of the cited mark 
, “RIMOWA”, and the Roman elements “ROWANA” were both formed by six letters and four of them were identical.
Both began with the letter “R” and ended with the letter “A”. Hence, they carried a similarity of moderate degree in terms of appearance and pronunciation. (2) The designated goods of both marks were luggage and travelling trunks.
The opposed mark would cause confusion to the relevant consumers if it is used on such goods or related advertisement materials. The court found after reviewing the supporting evidence submitted by the parties that the cited mark had been widely used and well known in Taiwan.
The court further found that the Opposed Party should be well aware of the existence of the cited mark since the registration of its other Roman mark “ROWANA” was previously cancelled due to the fact that an oval design was added during actual use which was found to be causing confusion with the cited mark .
The court held that the Opposed Party’s filing for registration of the opposed mark was apparently not in good faith, and that the opposed mark should not be allow to register according to the Trademark Act.
For further information, please contact:
Joyce I. Ho, Partner, Tsar & Tsai Law Firm
joyeho@tsartsai.com.tw
