Changes of Classification for Registration of Trademarks: Medicated Cosmetics and Cleaning Products are affected

Many cosmetics and cleaning products in the market are flaunted as “medicated” but in fact not medicines, which may likely mislead consumers to believe those products offering medical effects. To resolve this issue, Legislative Yuan amended and passed Cosmetic Hygiene and Safety Act on May 30^th, 2019, in which “medicated cosmetics” is corrected as “cosmetics for specific purpose” and clearly stipulates that related industries are not allowed to publicize any medical efficacy in the advertisement. In the future, certain words and phrases such as “medicated” and “cosmeceutical” cannot be addressed on the name of goods and the labels.

After the amendment, Taiwan Food and Drug Administration announced List of Specific Purpose Ingredients in Cosmetic Products on May 30^th, 2019, and abolished Criteria for Cosmetics containing Medical, Poisonous or Potent Drugs on August, 6^th, 2020.

In response to the change of provisions, Taiwan Intellectual Property Office (TIPO) amended Classification and Cross Reference Index for Goods and Services in November 2020, which mainly affects as following:

1. The original goods under the groups of “medicated cosmetics preparations; medicated shampoos; medicated mouth washes” in class 5 shall be no longer accepted from January 1^st, 2021. The future arrangements are as follows:
   • Applications for designated goods under the groups of  “toiletry preparations, after-shave lotions, shampoos, mouth washes” in class 5:
     • shall be classified as pharmaceuticals and clearly indicated “for medical purposes”;
     • shall comply with the regulations and announcements of the competent authority when actual use of trademarks.
   • The original goods under the groups of “medicated cosmetics preparations; medicated shampoos; medicated soap; medicated mouth washes” in class 5:
     • are now not allowed to use the term “medicated” as goods name;
     • and can only be manufactured or imported once the license is issued by the competent authority provided that it complies with the classification of “ cosmetics for specific purpose” in current provisions and applies for inspection and registration when the trademark is actual used.
   • The standard determination of the genuine use of registered trademarks designated for use on the goods of “medicated cosmetics preparations; medicated shampoos; medicated mouth washes” in class 5, are adjusted as follows:
     • In addition to complying with the use of “cosmetics for specific purpose”, the actual transaction situation of the products in the market also needs to be taken into account for judgments.
     • Trademarks actually used with goods such as “medicated after-shave lotions; medicated shampoos; medicated toiletry preparations; medicated mouth washes” etc. are identical to the registered goods and will not affect the determination of the scope of designated goods.
2. When classifying groups and assigning search range for goods and services for the amended goods of “medicated after-shave lotions; medicated shampoos; medicated toiletry preparations; medicated mouth washes” in class 5, the Notices of Classification and Cross Reference Index for Goods and Services should be taken into consideration.
3. For those trademarks that have already approved and registered,  designated for use on the goods under the groups of “medicated cosmetic preparations; medicated shampoos; medicated soaps” group and “medicated mouth washes” in class 5, still need to be cross-search for similarity against all the goods under the subgroup of “hair waving preparations, hair dyes, shampoos, hair conditioners” in class 3. To avoid Likelihood of Confusion, related industries should prevent using same or similar trademarks for applications.