19 November, 2007
TIPO Invalidates Trademark Registration of Confucius
A recent wire service news story incorrectly reported that the Taiwan Intellectual Property Office (TIPO) "...has decided to revoke a patent registration request...[for]... the use of the name of the ancient Chinese thinker Confucius." What the TIPO has in fact done is invalidate a trademark registration of the name Confucius by the Office of the Chinese Language Council International, a corporate entity directly administered by China's Ministry of Education.
According to the TIPO, the Chinese Language Council applied to register "Confucius" as a trademark for educational services provided by the Council's international chain of Chinese language teaching centers known as Confucian Institutes. The TIPO published the trademark registration but after publication, the TIPO's internal quality control working group questioned the appropriateness of the registration. An internal review process determined that the name "Confucius" lacked distinctiveness as a marker identifying the origin of educational services and products and TIPO invalidated the registration. The Chinese Language Council is now being asked to submit comments on the invalidation.
If the invalidation is sustained, the Chinese Language Council can appeal to the Ministry of Economic Affairs. Should the Ministry deny the appeal, the Chinese Language Council can seek relief by filing an action in Taiwan's administrative courts. It should be noted that Chinese applicants have standing in Taiwan to file for trademark registrations under the TIPO's Operational Points Regarding Application for Patent and Trademark Registrations in Taiwan by Mainland Chinese People and that since 1994, more than 3,000 trademarks have been successfully registered by Chinese applicants.
Despite this invalidation, the TIPO reaffirmed the general principle that historical names such as "Lincoln" and "Franklin" may be registered for products such as cars and mutual funds. It intends to ask for expert opinion on international practice and will use this advice when it amends its Main Points for Examination of Distinctiveness of Trademarks next year.
For further information or to comment in the proposed amendments, please contact Peter Dernbach at +886-2-2311-2345 ext. 222.
