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When should the trademark applicant file for restriction of the designated goods or services or for division of the registration application? Is the timing to file limited to the time before a disapproval decision is rendered? (Benefits of devising trademark strategies for various countries also considered)
I. Introduction
Where a portion of the designated goods or services of a trademark application is determined to be unregistrable, the applicant may file for restriction of the designated goods and services or for division of the registration application, thus enabling the registration of the uncontested specifications of goods or services.
When should the applicant file for restriction of the specifications or for division? Article 31-3 of the Trademark Act provides that "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." The legislation is based on the mechanism currently in effect of notifying the applicant of the reasons for disapproval in advance, giving the applicant ample time to consider whether to restrict the designated goods or services or to file for division of the application. To facilitate the determination of the case, it is therefore prescribed that no further requests or applications may be made after a disapproval decision is rendered.
However, some question the extent to which such procedure of giving advance notice of the reasons for disapproval should be implemented if the applicant is to be given ample opportunity in considering whether to restrict the specifications or to file for division. Attention should be drawn to Article 31-2 of the Trademark Act, which provides that the applicant shall be given a written notice stating the grounds for disapproval and the applicant shall submit an opinion within a specified time frame before a disapproval decision on the basis of a lack of distinctiveness is rendered.
Given the above, it is noteworthy to consider the Intellectual Property and Commercial Court's judgment recently made available in January 2024. The judgment states that, where there is any defect in the procedure of giving advance notice of the reasons for disapproval, the applicant shall still be given the opportunity to file for restriction of the specifications or for division after a disapproval decision is rendered and in the course of seeking administrative remedies. The following is a brief explanation.
II. Case brief
The trademark "TRUEMESH" is registered for, among other goods and services, "network communication equipment; video monitors; microphones" in Class 9, "security equipment" in Class 35, "telecommunication transmission services" in Class 38, "platform as a service [PaaS], namely providing a computer software platform for use with home and environment monitor and control and automated control systems" in Class 42, and "home security and monitor services" in Class 45.
The Taiwan Intellectual Property Office (TIPO) as the defendant rendered the Advance Notice of the Reasons for Disapproval Decision and later the Disapproval Decision, which state that the trademark "TRUEMESH" can mean "real mesh; real mesh (network)," and TIPO listed all of the designated goods in Class 9 to hold that the trademark is descriptive of the nature, technology or relevant characteristic of "all of such Class 9 goods and of other designated goods and services " and therefore non-distinctive, on the basis of which TIPO rejected the registration filing.
III. The courts' judgment
(i) The court of first instance
The plaintiff claimed that it is only generally stated in the Advance Notice of the Reasons for Disapproval Decision rendered by TIPO that all of the goods and services for which the trademark "TRUEMESH" is designated are non-distinctive, causing the plaintiff to be unable to file for restriction of the designated goods and services or for division of the registration application before the Disapproval Decision was rendered and thereby harming the plaintiff's rights and interests under Article 31-3 of the Trademark Act. The plaintiff also submitted a list of designated goods and services unrelated to "mesh network" for examination by the court.
However, the court of first instance held that TIPO clearly states in the Advance Notice of the Reasons for Disapproval Decision that all of the goods and services for which the trademark "TRUEMESH" is designated are non-distinctive; and that upon receipt of such notice the plaintiff could have proceeded to file for restriction of the designated goods and services or for division of the registration application, but did not do so. Accordingly, TIPO could only examine the case in accordance with the principle of granting or rejecting a case in its entirety, and TIPO did so in accordance with the law.
(ii) The Supreme Court
The Supreme Court held that TIPO's Advance Notice of the Reasons for Disapproval Decision does not specifically elucidate the relationship between the trademark "TRUEMESH" and its various designated goods and services, and does not give specific reasons for the determination that all of such goods and services are non-distinctive. For instance, the goods "video monitors; microphones" in Class 9 are clearly unrelated to "MESH" in the sense of "mesh network," and the explanation required of the defendant as stipulated in the advance notice only includes 1) how the trademark is used and the form of its actual use; 2) specific facts and evidence that are not descriptions of goods and services; and 3) evidence showing that the trademark has acquired distinctiveness. (Does not include any explanation on "restriction of the designated goods and services" or on "division of the registration application.") Given the above, the Supreme Court held that the court of first instance had erred in its judgment and remanded the case.
(iii) The court of first instance hearing the remanded case
The case was remanded to the court of first instance. Pursuant to the Supreme Court's judgment, the court determined that the procedure of giving advance notice of the reasons for disapproval is in violation of the law, and proceeded to clearly divide the goods and services for which the trademark "TRUEMESH" is designated into two types on the basis of whether the goods or services are related to "mesh network." Using this criteria, the court determined that those goods and services that are unrelated thereto are distinctive and accordingly revoked TIPO's Disapproval Decision.
The court's main reasons for its judgment are as follows: "When the trademark office processes a trademark registration application, the relationship between the trademark and its designated goods or services shall be the basis on which it determines whether the trademark is distinctive. If only a portion of the designated goods or services is non-distinctive, the trademark office shall give the applicant a written notice of the reasons for disapproval, after which the applicant may, before a disapproval decision is rendered, file for restriction of the designated goods and services, or for division of the registration application, in order to obtain registration of a portion of the designated goods or services. . . . In the previous examination of the case, the plaintiff claimed that the goods in Class 9 and the services in Classes 35, 38, 42 and 45 for which the trademark "TRUEMESH" is designated are unrelated to the mesh network technology. . . . Before rendering a disapproval decision, the defendant . . . gave the plaintiff an advance notice of the reasons for disapproval, which states that the trademark "TRUEMESH" . . . is non-distinctive. . . . However, the said notice . . . does not specifically explain the relationship between the trademark "TRUEMESH" and its various designated goods and services, causing the plaintiff to be unable to file for restriction of the designated goods and services or for division of the registration application in accordance with the contents of the notice before the Disapproval Decision was rendered. To protect the plaintiff's rights and interests, the defendant shall once again implement the procedure of sending an advance notice of the reasons for disapproval."
IV. Conclusion
In this case, it seems the Supreme Court and the court of first instance hearing the remanded case held that TIPO shall be responsible for giving a full explanation of why the trademark "TRUEMESH" for use on various designated goods and services may not be registered, on the grounds that such explanation enables the applicant to understand substantively the dispute over the various designated goods and services and to decide accordingly whether to claim that the trademark is registrable or file for restriction of the specifications or for division of the registration application.
It is noteworthy that the court hearing the remanded case held the following with regard to unrelated goods and services: "The trademark "TRUEMESH" designated for use on the foregoing classes of goods or services has been granted registration by the EUIPO and in countries such as the US, Canada, the UK, Australia, and New Zealand in which English is the native language, as shown by the plaintiff's Exhibit 13, namely the filing and registration status of the trademark "TRUEMESH" in various countries. The plaintiff claimed that the trademark "TRUEMESH" for use on . . . goods or services is distinctive and that such claim is not baseless," further demonstrating that devising trademark strategies for various countries in advance may prove beneficial to the applicant when filing for trademark registration in other countries.