Enacted and promulgated on January 25, 2011 by the order of the MOEA, enforced on February 1, 2011
Amended and promulgated on April 20, 2012 by the order of the MOEA, enforced on July 1, 2012
TABLE OF CONTENTS
1. Preface
2. Definition and nature
2.1Definition
2.2Nature
3.Type
3.1Retail services of general goods
3.2Retail services of specific goods
4. Examination of names of retail services
4.1Retail services of general goods
4.2Retail services of specific goods
4.3Concurrent designation for retail services of general goods and retail services of specific goods
4.4Items that cannot be designated as the names of retail services
4.4.1Indefinite retail service names
4.4.2Cases which do not conform to the nature of retail services
5.Principles for assessment of similarity between retail services and other goods or services
5.1Retail services of general goods
5.1.1Similarity between retail services of general goods
5.1.2Similarity between retail services of general goods and retail services of specific goods
5.1.3Similarity between retail services of general goods and the goods themselves
5.1.4Similarity between retail services of general goods and other services
5.2Retail services of specific goods
5.2.1Similarity between retail services of specific goods
5.2.2For similarity between retail services of specific goods and retail services of general goods, see Article 5.1.2
5.2.3Similarity between retail services of specific goods and the specific goods themselves
5.2.4Similarity between retail services of specific goods and other services
6.Use of trademark for retail services
Examination Guidelines on Retail Services
1.Preface
The rapid growth of large shopping malls, convenience stores, and supermarkets and the emergence of new retail modes such as mail order, TV shopping and cyber shopping (shopping by electronic means) has escalated the competition in the retail market and changed people's living and consuming habits. To protect trademarks used by retail services providers, TIPO officially announced the acceptance of retail services applications on 23 December 1997 and published the Main Points for Examination of Service Mark Applications for Retail Services (hereinafter "Main Points") as the examination criteria on 20 April 1998. However, in the ten-odd years since the Main Points came into effect, the Trademark Act has undergone two amendments, whereby the term "service mark" was deleted and replaced by the term "trademark." The definition of retail services in the Main Points differs somewhat from the Nice Classification (9th edition), and the Standard Business Classification of the Republic of China (6th edition) compiled and printed in December 2006 by the Directorate-General of Budget, Accounting and Statistics of the Executive Yuan on which the Main Points were based has been amended for three times by the competent authority and is now the 9th edition.
Since the opening of retail services applications, some applicants have often enumerated too many items of retail services because they do not understand the substance of retail services, thus resulting in the unreasonable phenomenon that the items applied for do not correspond to the businesses actually operated or the operational modes in the market, which in turn hinders fair competition in the market, creates difficulties in practical examination and wastes administrative resources and manpower. There have also been cases where applicants applied to register trademarks for retail services in connection with self-manufactured goods but failed to file general trademark applications for these goods; as a result, the use of the trademark rights does not correspond to the actual trading mode and the purpose of trademark protection cannot be achieved. In order to clarify the concept of retail services and to provide a reference for case examination, these Guidelines hereby specify the definition, nature and types of retail services, the examination of names of retail services, the principles for assessment of similarity between retail services and other goods or services, and trademark use in connection with retail services.
2.Definition and nature
2.1Definition
According to the definition under Class 35 in the Nice Classification, the term "retail services" refers to an activity of gathering a variety of goods, enabling consumers to conveniently view and purchase these goods, excluding the necessary transportation services. Retail services may be offered through retail or wholesale stores, or via electronic media such as mail order, the Internet and TV shopping channels. In other words, retail services feature an activity of gathering different kinds of goods at the same location (in spite of actual or virtual stores) to attract a wide range of the consuming public and stimulate their desire to purchase goods by means of a convenient shopping environment and services incidental thereto. For consumers, retail services satisfy their needs by offering a great diversity of goods, which makes it possible to buy all they want at one go and convenient to compare and choose.
2.2Nature
In terms of nature, retail services are services which come with the act of selling goods and which are not only part of the act of sale, but also cover all services provided in the process. For instance, retail services provided by actual stores may include gathering of goods, on-site display planning, provision of shopping carts or shopping baskets, trial or try-on of goods, and consumer consultation; the services provided by virtual stores may include provision of relevant goods information via elaborately designed catalogues or webpages, thus making it convenient for consumers to select and purchase the desired goods. Therefore, the subject to be protected by a trademark application for retail services shall be the services offered by the applicant when selling goods, rather than the goods actually displayed and sold. In turn, the trademark for retail services completely differs in nature from the trademark designated for goods, which serves to identify the source and nature of the goods. If the applicant offers his/her own branded goods via the sales channels, the trademark used on the goods shall merely identify the production or manufacture source of these goods, and shall not be deemed the use of the trademark for retail services. If the applicant considers that the trademark used on the goods shall be protected, he/she shall apply to register the trademark in accordance with the nature of the goods and pursuant to the classification of goods and services listed in Article 18 of the Trademark Regulations.
3.Type
The Main Points for Examination of Service Mark Applications for Retail Services published on 20 April 1998 divide retail services into two types, retail services of general goods and retail services of specific goods, and provide illustrations of retail services by referring to the Standard Business Classification of the Republic of China (6th edition) compiled and printed in December 1996 by the Directorate General of Budget, Accounting and Statistics of the Executive Yuan.To meet the relevant companies' practical needs, the examples of retail services are adjusted with reference to the Codes of Business Items of Companies compiled by the Department of Commerce of the Ministry of Economic Affairs. In order to clarify the meanings of "retail services of general goods" and "retail services of specific goods," the Guidelines hereby give the following definitions, and examples of the two types of retail services are provided in TIPO’s “the reference book for classification and searching of goods and services” (hereinafter, the “Reference Book”) for trademark examiners' and applicants' reference.
3.1Retail services of general goods:
This type of retail services means to gather and offer, in a non-exclusive form, a variety of goods at the same location, making it convenient for consumers to view and purchase them. For example, supermarkets offer, in addition to foods, beverages and tobacco products, clothes, furniture, electrical appliances, hardware, cosmetics, etc., making it conveniently for consumers to view and purchase them.
3.2Retail services of specific goods:
This type of retail services means to gather and offer, in an exclusive form, specific goods or goods within a specific scope at the same location, making it convenient for consumers to view and purchase these goods. For example, "retail of clocks and watches" means to gather and offer, in an exclusive form, clocks, watches and their parts at the same location, making it convenient for consumers to view and purchase them. For another example, "retail of agricultural products" means to gather and offer, in an exclusive form, the good within a specific scope such as vegetables, fruits, rice, wheat, flour, coarse grains and rice products at the same location, making it convenient for consumers to view and purchase them.
4.Examination of names of retail services
As the terms "retail services of general goods" and "retail services of specific goods" are broad and general, to avoid making the scope of retail services unclear, the services to be covered by an application shall be clearly specified and shall not be simply named "retail services of general goods" or "retail services of specific goods."
The said two types of retails services can both be offered through actual stores or virtual stores. The applicant can apply to register retail services by defining them with operational modes such as department store, supermarket or convenience store, or by defining them as "mail order," "TV shopping," "cyber shopping (shopping by electronic means)" or "direct-sale retail services." Such services will be classified as the term "retail services of general goods." If the applicant wishes to specify the kind of goods involved, such as "retail services of cosmetics," "retail services of cosmetics via provision of catalogues," "retail services of cosmetics via TV or the Internet" and "direct-sale retail services of cosmetics," such services will be classified as "retail services of specific goods." The practical examination principles are explicated as follows:
4.1Retail services of general goods
As generally understood and in view of the trading modes in the market, department stores, supermarkets, convenience stores, hypermarkets, shopping malls or wholesale stores always bring together a variety of goods for sale and offer diverse but integrated services. Therefore, the applicant is not required to specify the details, such as provision of shopping carts or shopping baskets, fitting room, and/or product trial or try-on, nor is there need to itemize the goods, such as foods, beverages, clothes, accessories and household daily necessities on offer via the sales channels. The applicant only needs to specify the business mode for the retail services of general goods that he/she wishes to provide to be clearly understood.
4.2Retail services of specific goods
4.2.1A trademark designated for goods and that for retail services are meant to protect different subjects. As the trademark for goods serves to identify the source of the goods, the designated goods shall be specified one by one. In contrast, retail services aim to identify the services provided in the applicant's sale of goods, rather than the specific goods displayed and sold via the sales channels. Therefore, the applicant only needs to name the goods in a general way on the basis of the scale and need of his/her business. For instance, "retail services of electrical appliances" means that the goods on offer via the sales channels cover a variety of electrical appliances such as televisions, refrigerators and washing machines. Of course, the applicant may also use specific product names to describe the goods concerned, in which case, however, the scope of retail services that he/she provides will be confined to those items as specified. For instance, "retail services of clocks and watches" means that the applicant only gathers one single kind of goods, i.e. "clocks and watches," at sales channels for consumers to view and purchase them.
4.2.2In "retail services of specific goods," general terms can be used to describe the goods involved. If the applicant uses general terms to describe the goods involved, specific itemization of the goods is not necessary. For instance, if "retail services of cosmetics" is designated, it is not required to specifically point out that the retail services relate to "lipsticks, eye creams, eyebrow creams, whitening facial masks, tonic lotions, skin moisturizers, etc." As the two types of retail services are identical in nature and the goods covered by the former already include those by the latter. Itemization of the retail goods produces no substantial benefits to the applicant.
4.2.3The goods involved in the retail services of specific goods shall not be described with reference to class numbers in the table of classification of goods and services. For instance, "retail services relating to goods in Class 30" or "retail services relating to goods in Classes 29, 30, 31 and 32" is incorrect. The trademark examiner shall require the applicant to correct such a description.
4.3Concurrent designation for retail services of general goods and retail services of specific goods
In addition to the number of goods gathered for sale, "retail services of general goods" and "retail services of specific goods" differ in whether the retail of goods is provided in an exclusive form. As the two types of retail services involve different operational modes, it is impossible to offer services in both non-exclusive mode and exclusive mode via the same sales channels. In other words, if the applicant designates a trademark for retail services of general goods, he/she shall not concurrently designate it for retail services of specific goods, unless the applicant desires to use the same trademark for different sales channels. Therefore, if the applicant designates one trademark for both retail services of general goods and retail services of specific goods, the trademark examiner may require the applicant to explain and clarify whether "retail services of specific goods" refers to the goods sold via the sales channels providing retail services of general goods, or relates to different sales channels. If "retail services of specific goods" simply refers to the goods sold via the sales channels providing retail services of general goods, the applicant shall be requested to delete the term "retail services of specific goods."
For instance, when "department stores and retail services of clothes, accessories, electrical appliances, cosmetics, shoes, leatherware, and household daily necessities" are designated, since, as generally understood, "department stores" may cover the sale of "clothes, accessories, electrical appliances, cosmetics, shoes, leatherware, and household daily necessities," the trademark examiner may require the applicant to explain whether "clothes, accessories, electrical appliances, cosmetics, shoes, leatherware, and household daily necessities" refer to the goods for sale at department stores. If so, the applicant shall be requested to delete these terms. If not, it means that retail of those goods and "department stores" involve different sales channels. If and when the need to determine use of the trademark arises, the applicant shall provide evidence of respective use of "retail services of general goods" and "retail services of specific goods."
4.4Items that cannot be designated as the names of retail services
If the applicant's identification of retail services is indefinite or does not conform to the nature of retail services, the trademark examiner shall require the applicant to correct the same. The following are some problems that are frequently encountered in practice.
4.4.1Indefinite retail service names
4.4.1.1For provision of goods which are prepared on site and sold to consumers, such as barbecued meat, fried chicken, stewed eggs, stewed dry bean curd, etc., as generally understood and in view of the trading situations in the market, it shall be deemed sale of general goods or provision of dining services. If the applicant desires to apply for retail services in connection with goods of this kind, the trademark examiner may require the applicant to explain whether he/she desires to identify the production source of goods, the services provided, or the retail services provided in the process of selling such goods. If the applicant desires to identify the production source of the goods or the services provided, the trademark examiner shall request the applicant to apply for trademark protection for appropriate classes of goods and services in accordance with the table of classification of goods and services in Article 13 of the Trademark Regulations. For instance, the goods mentioned above shall fall under the goods in Class 29 or dining services in Class 43. If the applicant desires to identify the retail services provided in the process of selling the goods, he/she can apply for a trademark registration for retail services in Class 35 only on the condition that the services involve gathering and displaying a variety of goods, making it convenient for consumers to view and purchase them,.
4.4.1.2The term "chain store," which merely signifies the operational mode of an enterprise, exists in every trade. If the term "chain store" is designated in connection with retail services, whether it relates to "retail services of general goods" or "retail services of specific goods" cannot be determined. Therefore, the applicant shall specify the operational mode or the goods involved. For instance, an application to register "convenience chain store" will be classified under "retail services of general goods," while that for "cosmetic retail chain store" will be under "retail services of specific goods."
4.4.1.3In terms of concept, there are two types of "specialty store": one specializes in selling the goods of specific brands, and the other specializes in selling specific kinds of goods of different brands. When a variety of goods are gathered in a specialty store, making it convenient for consumers to view and purchase them, an application to register retail services can be filed as long as the kind of goods involved in such retail services are clearly identified, for instance, "TV game specialty store," "toy specialty store," etc. However, it shall be, particularly, noted that identification of another party's brand in the name for retail services is not allowed; for instance, "Hello Kitty specialty retail store" or "DISNEY toy specialty store" will not be acceptable, and the applicant will be required to delete the brand name and specify the kinds of goods involved in the retail services.
4.4.2Cases which do not conform to the nature of retail services
4.4.2.1"Custom-made goods" refer to goods that are produced or manufactured according to customers' instructions and are then directly shipped from and installed by factories. As generally understood and in view of the trading situations in the market, it is practically impossible to gather custom-made goods for consumers to purchase them, and thus, sale of such goods differs from retail services in nature. Therefore, the applicant shall apply for trademark registration to protect custom-made goods under appropriate classes in accordance with Article 13 of the Trademark Regulations. For instance, as wafer manufacturing machines are mostly manufactured or produced according to customers' specifications and are directly shipped from factories and installed by factory personnel, they are deemed custom-made goods, not retail goods on display at stores for sale. Thus, an application to register "retail services of wafer manufacturing machines" will not conform to the actual operational conditions in the market, and it will be suggested that the applicant register the term "provision of customization services of wafer manufacturing machines according to customers' specifications" in Class 40 instead.
4.4.2.2In terms of market operations, "logistics center" involves the actual circulation of goods, during which process, relevant logistic activities such as transportation, warehousing, loading/unloading, packaging, circulation, processing and information are effectively combined through management procedures in order to create value and satisfy customers' needs and social demands. As such services differ from retail services in which a variety of goods are gathered for consumers' viewing and purchasing, "logistics center" would be inappropriate as a name for retail services. If the applicant desires to identify such services, he/she shall, on the basis of the nature of the services concerned, apply for trademark registration under Article 13 of the Trademark Regulations, for instance, "container transportation" or "cargo warehousing" in Class 39.
4.4.2.3"Telephone shopping" is an activity of shopping on the phone, and can only be performed on the basis of relevant information from product catalogues, the Internet, television or friends. It is an act behind the trade and is different from retail services, in which a variety of goods are gathered for consumers' viewing and purchasing. Therefore, "telephone shopping" would be inappropriate as a name for retail services.
5.Principles for assessment of similarity between retail services and other goods or services
The practical principles for assessment of similarity between “retail services of general goods” and “retail services of specific goods”, as well as similarity between the aforementioned two kinds of retail services and other goods or services, are explicated as follows. Before that, it must be emphasized that determination of this kind of similarity does not necessarily result in the likelihood of confusion, as other factors shall also be considered (see the Examination Guidelines on Likelihood of Confusion published by TIPO).
5.1Retail services of general goods
5.1.1Similarity between retail services of general goods
Retail services of general goods can be provided both by actual stores such as department stores, supermarkets, convenience stores, hypermarkets and shopping malls and by virtual stores such as mail order, TV shopping and cyber shopping. While there are differences between the two kinds of stores, both gather a variety of goods in a non-exclusive form and provide diverse retail services and share common or related features in terms of satisfaction of consumers' needs, service providers or other factors. If these services are labeled with an identical trademark or similar trademarks, they, as generally understood and in view of the trading situations in the market, are likely to cause general service consumers to misidentify them as coming from the same source or different but related sources. Therefore, these services are deemed similar.
5.1.2Similarity between retail services of general goods and retail services of specific goods
In addition to difference in the number of goods gathered and in whether the retail services are provided in an exclusive form, difference in structure of goods, target consumers and shopping environment may result in completely different operational features to satisfy consumers' different needs. Therefore, the two types of services are deemed dissimilar. For instance, "department stores" and "retail services of clocks and watches" are dissimilar.
5.1.3Similarity between retail services of general goods and the goods themselves
Retail services of general goods in the form of department stores, supermarkets, convenience stores, hypermarkets, shopping centers, etc., indicate integral services, such as gathering of goods, on-site display planning, provision of shopping carts or shopping baskets, trial or try-on of goods, and consumer consultation. The trademark on the goods, on the other hand, aims to identify their source and quality. Therefore, retail services of general goods and the goods themselves differ in nature and are deemed dissimilar. For an application to register retail services of general goods, the trademark examiner does not have to conduct cross-searches in respect of all the goods that may be sold.
5.1.4Similarity between retail services of general goods and other services
The classification of goods and services for which a trademark is designated in a registration application filed in the R.O.C. is based on the Nice Agreement Concerning the International Classification of Goods and Services. In the Agreement, eleven classes of services under Class 35 through Class 45 are basically different in terms of the services that they cover. Therefore, retail services of general goods and other services are deemed dissimilar.
5.2Retail services of specific goods
In view of the needs of administrative management, the Guidelines were formulated by referring to the retail business classification by relevant competent authorities. In view of practical examination needs, the names for retail services of specific goods are organized in accordance with their nature and published in the Reference Book by TIPO.
5.2.1Similarity between retail services of specific goods
As there are lots of items of the retail services of specific goods listed under the sub-class of the retail services of specific goods in the Reference Book published by TIPO (hereinafter, the “group”, means the retail services of specific goods indicated by the 6-digit codes), these groups differ greatly in the nature of the goods involved and occupy obviously different sectors of the market, providers of such retail services may exhibit different operational features on account of difference in the structure of goods, target consumers and shopping environment to satisfy consumers' different needs. Therefore, retail services of specific goods are, in principle, dissimilar. For instance, "retail of agricultural products" and "retail of furniture," have different functions, uses, target consumers, marketing channels and sales channels on account of the different goods involved. Therefore, retail services in respect of goods with different characteristics are deemed dissimilar. On the other hand, if the types or nature of goods involved in the retail services of specific goods are the same or extremely similar, and if the ways to satisfy consumers’ needs, the service providers and other factors are the same or related, according to commonly social conception and trade in the market, such circumstance is likely to let consumers believe that two retail services come from same source or different but related source and such retail services are deemed similar. For instance, if the applicant indicates "retail or wholesale of educational and entertainment products" in the trademark application, and another party uses the name "retail or wholesale of sports articles and apparatus" under the same group in another trademark application, since the retail services provided by both parties are close in nature and may satisfy the same needs, they are deemed similar in principle, and vice versa.
5.2.2For similarity between retail services of specific goods and retail services of general goods, see Article 5.1.2
5.2.3Similarity between retail services of specific goods and the specific goods themselves
If the purpose of the services is to sell, install or repair specific goods, there is a similarity between such services and such goods (see Article 5.3.11 of the Examination Guidelines on Likelihood of Confusion published by TIPO). Providers of retail services of specific goods gather specific goods or goods within specific scope at the same location, making it convenient for consumers to view and purchase them, so provision of specific goods for sale is one of the objectives of retail services. If consumers anticipate that the retail services of said specific goods are closely related to the specific goods themselves and consider them as coming from the same source or different but related sources, the retail services of such specific goods and the specific goods themselves are deemed similar. "Clothes" and "retail of clothes," or "cars and motorcycles" and "retail of cars and motorcycles" are two examples. The scope of cross-search in respect of "retail services of specific goods" and "specific goods" is illustrated in the Reference Book. However, such illustration is for administrative management and examination reference only. Determination of whether retail services of specific goods and the specific goods themselves are similar is not absolutely restricted thereby.
5.2.4Similarity between retail services of specific goods and other services
The eleven classes of services under Class 35 to Class 45 are basically dissimilar because they involve services of different nature. However, if the services aim to satisfy consumers' specific needs, the closer the consumers' needs, the more similar the services are. For instance, "agency of distribution services" involves acting as an agent for others to promote their goods for their interests and receiving remuneration therefor; the services indicate an act of agency. Such services differ from "retail services," which provides stores or sales channels to make selecting and purchasing goods convenient, and in terms of nature, purpose and target consumers, they are therefore deemed dissimilar. Nevertheless, if the goods involved in the agency of distribution services and in the retail services of specific goods are of the same kind or are so close in nature that they are related in terms of satisfaction of consumers' needs, service providers or other factors, as generally understood and in view of the trading situations in the market, they are likely to cause such service consumers to misidentify them as coming from the same source, or different but related sources and thus may be deemed similar. For instance, "agency services relating to distribution of clothes" and "retail services of clothes" may be determined to be similar.
6.Use of trademark for retail services
6.1“Use of a trademark” means any of the following act, in the course of trade, where such trademark is capable of being recognized by relevant consumers as a trademark: (1) to apply a trademark to goods or packaging or containers thereof; (2) to possess, display, sell, export, or import the goods referred to in the preceding subparagraph; (3) to apply a trademark to articles relating to the provision of services; or (4) to apply a trademark to commercial documents or advertisements relating to goods or services. These shall also apply to acts performed by digital audio-visual means, through electronic media, on the Internet, or through other media. (Article 5 of the Trademark Act) While services by themselves are intangible and cannot be directly labeled with a trademark, the trademark can be labeled on tangible objects representing such services. As retail services are provided during the process of selling goods, a trademark owner can use the trademark on articles, documentation, advertisements or promotional materials associated with his/her business in order to promote the services, such as signboards, information boards erected on each floor of a store, signs indicating sales zone, shopping carts, shopping baskets, display shelves, point-of-sale cash registers, receipts, shop windows, salesclerks' uniforms, hats and name badges, fitting rooms, product catalogues, packaging of goods sold, wrapping paper and shopping bags (such use is not confined to these examples). The trademark owner can also enable relevant consumers to recognize his/her trademark through digital audio-visual means, electronic media or other media, including TV commercials and Internet advertisements.
6.2Providers of mail order, TV shopping, and cyber shopping (shopping by electronic means) retail goods by means of two-dimensional graphics, digital audio-visual material, or electronic media or other media. All the services that they provide, from development and gathering of goods, order processing, packaging and distribution, pre-sale services to after-sale services, are professionally planned in order to offer adequate and complete information about the goods for consumers' viewing and purchasing, thereby making said consumers inclined to buy them. The use of a trademark for such retail services includes not only product catalogues, computer webpages, electronic newspapers and images on TV, but also articles, documentation, advertisements or promotional materials associated his/her business, such as product catalogues, packaging of goods, wrapping paper and shopping bags, to promote the services.
6.3If the trademark owner uses a trademark on goods, their packaging/ containers thereof or other articles relating thereto, thus misleading the public into regarding such use as promotion of the goods, it should not be deemed the use of a trademark for retail services. For instance, labeling goods or the packaging/containers thereof with a trademark may cause consumers to consider such trademark as that owned by the producer or manufacturer of such goods and identifying the source of the goods, so such use cannot be deemed the use of a trademark for retail services.
6.4"Retail services of general goods" and "retail services of specific goods" are two different types of services. Therefore, the actual use of a trademark shall be based on the nature of the services registered. For instance, when a trademark is registered for retail services of specific goods, it is meant to gather, in an exclusive form, specific goods or goods within a specific scope at the same location for consumers' viewing and purchasing. If the gathering of a variety of goods at the same location for consumers' viewing and purchasing is not done in an exclusive form, it is deemed retail services of general goods and does not comply with the registered use of the trademark.