TIPO has referred to the examination guidelines of the EUIPO, JPO, the USPTO, and the judicial practice of Taiwan and revised the Examination Criteria on Likelihood of Confusion, aiming to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. It was promulgated and put into effect on October 27, 2021.
The key points of the revision are as follows:
Regarding Similarity between Trademarks:
The revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.
Regarding the Similarity of Goods and Services:
An additional criterion, “channels of distribution or points of sale,” was included in the list of determining factors for the degree of similarities between goods and services. Definitions of goods/services that are considered in competition, complementary, or auxiliary/ancillary in relation to specific other goods or services, and supplemental information pertaining to the relations between the goods and their components, raw materials, or semi-finished products, respectively, were also incorporated into the revision. Examples and applicable situations of abovementioned factors were enumerated.
Other Minor Changes:
Several determining factors were modified, such as whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy, whether the trademark applicant possesses a bona fide intent, and the qualifying factors for being "obviously improper," part of the proviso of Subparagraph 10, Paragraph 1, Article 30 of the Trademark Act.
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