The Taiwan Intellectual Property Office (TIPO) has recently rejected several trademark registration applications on the grounds that the trademarks were contrary to public order or good morals. Article 30 of the Trademark Act states that a trademark shall not be registered if it is contrary to public order or good morals. The terms 'public order' and 'good morals' have been criticised for being too broad and uncertain. In order to clarify the definition and provide a standard for applicants to follow, on May 11 2015 TIPO published the Guidelines for Examining Trademarks Contrary to Public Order or Good Morals.
The term 'public order' means the criteria to be followed by a country or society for living together, including national spirit, basic national policy, the rules and regulations of the legal system and basic values. The term 'good morals' means the common social sense of morality, including the traditional culture, lifestyle and folk customs.
Examination for violation of public order or good morals
In the guidelines TIPO stated that in order to decide whether a trademark registration is contrary to public order or good morals, judgement will be made based on the appearance, concept or pronunciation of the trademarks, the social environment at the time of registration, the market for the designated products or services and public perception. It will then be considered whether it is contrary to or destroys religious, familial or social values, or affects the public interest.
The following trademarks will be deemed contrary to public order or good morals:
- A mark that is likely to encourage crime, violence or terrorism or to disturb social order – for example, the term 'cocaine' used as a trademark for hair salons, cosmetology or saunas. As cocaine is an illegal drug in Taiwan, use of the word as a trademark would give the impression of supporting or encouraging use of the drug.
- A mark that causes offence to the dignity of Taiwan or its people – for example, the term 'taibaz' used as a trademark for bicycles and their spare parts and cars and spare parts. 'Taibaz' means an upstart from Taiwan, which is used in China to disparage Taiwanese people, so use of the word as a trademark would produce a negative impression of the Taiwanese people.
- A mark that has a negative association with foreign people – for example, the phrase 'dirty English' used as a trademark for cologne. The combination of the two words gives the impression of insulting England or the English language.
- A mark that cause religious offence – for example, the picture below used as a trademark for clothes, belts or scarves. It comes from a biographical film about Jesus Christ, and the image of Jesus is holy for Christians.
Click here to view image.
- A mark that offends a specific social people or group – for example, the Chinese term 'yaba' (meaning 'dumb') used for Chinese herbs. The term is also used to discriminate against those with a language disability. Using this trademark for Chinese herbs would discriminate against a specific group of people and have a negative influence on good morals.
- A mark that offends a specific person – for example, the phrase 'chen chao song wang 8 dan' used for eggs. 'Chen Chao Song' is the name of a specific person, and 'wang 8 dan' is a term used to condemn people. A combination of two terms is used to curse others and gives the impression of defaming a specific person.
- A mark which leads to fear or superstition, affecting mental or physical health – for example, the term 'wudu wawa” used for lace or Chinese knots. 'Wudu wawa' is also used for dolls used in witchcraft. Thus, use of the term as a trademark would produce a feeling of terror and indicate the supernatural.
- A mark that uses obscene or vulgar words or pictures – for example, the term 'chao ji buy' used for commercial design services. 'Chao ji buy' is a vulgar term used to scold people in Taiwanese. Thus, pronunciation of the term is contrary to common morals.
- A mark that uses the name or picture of a well-known historical person – for example, the term 'Confucius' used for contraceptive devices, toilets or gambling dens. Confucius was a famous Chinese philosopher. Using the name as a trademark for contraceptive devices, toilets or gambling dens would be contrary to public order and good morals.
Whether a trademark is contrary to public order or good morals depends on the culture, lifestyle and language of the country where registration is sought. Thus, a party wishing to register a mark in Taiwan should consult a local attorney to confirm that its intended mark is not against Taiwanese public order or good morals.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.