According to Taiwan's Trademark Act, a trademark shall not be registered if it comprises or consists of an indication which is descriptive of the quality, intended use, raw material, place of origin or related characteristics of the designated goods or services. Such descriptive trademark can be granted registration if, as a result of long-term and extensive use, it has become capable of distinguishing the applicant’s goods or services from those of others on the market and acquired distinctiveness.
In addition, according to the Examination Guidelines on Distinctiveness of Trademarks promulgated by the Intellectual Property Office (hereinafter referred to as TIPO), where a name coined by the applicant for their new goods or services on the market is directly and obviously descriptive of the goods or services, it would be improper to grant the applicant the exclusive right to use the coined name since the name is apt to lead the public to easily perceive the nature of the goods or services or the technology involved, while other traders in the same industry might also need to use the name which serves as a simple, obvious and direct description. In other words, even though the name was first coined by the applicant, it should still be deemed descriptive of the goods or services and hence is non-distinctive.
The distinctiveness of a newly coined service name was recently addressed by the Intellectual Property and Commercial Court (IPC Court) in an Administrative Judgment (under 115 Xing-Shang-Su-Zi No. 5).
The concerned case is pertinent to a trademark application for “台灣寵物信託” (translated into English as “Taiwan Pet Trust”) filed on April 12, 2023 for use on, inter alia, “banking, fiduciary”; “animal grooming, veterinary services”; and “legal consultancy; regulatory compliance auditing” in Classes 36, 44 and 45, respectively (hereinafter referred to as the applied-for trademark).
After examining the application, TIPO considered that the applied-for trademark solely formed by the words “Taiwan Pet Trust” is non-distinctive and unregistrable. TIPO elucidated that since “Taiwan” is a geographic term referring to our country and “pet trust” refers to the entrustment of funds for the care of pets, when used in connection with the designated services, the applied-for trademark merely conveys the location and characteristics of the designated services and hence is insufficient for consumers to recognize it as a source-identifier of the services. Accordingly, TIPO concluded that the applied-for trademark lacks inherent distinctiveness.
In rebuttal, the Applicant claimed that the phrase “Taiwan Pet Trust” forming the applied-for trademark was coined by them and had not as yet been used by any other person on the market. Disproving such claim, TIPO indicated that the purported lack of use of the phrase by competitors failed to prove that the phrase is not descriptive of the designated services. TIPO stressed that a term shall be considered non-distinctive so long as the ordinary and direct meaning of the term in relevant consumers’ perceptions is descriptive of the characteristics of the designated services.
In addition, after considering the evidential materials submitted by the Applicant, TIPO did not recognize that the applied-for trademark had acquired distinctiveness through long-term and extensive use and hence ultimately rejected the application.
After the Applicant exhausted all available pre-suit remedies, this case was brought up for the review by the Intellectual Property and Commercial Court (the IPC Court). The IPC Court upheld TIPO's decision, finding that the applied-for trademark is descriptive of the designated services and therefore lacks inherent distinctiveness.
In addressing the Applicant’s arguments that the applied-for trademark was first coined by them and has acquired distinctiveness through their use and advertising, the IPC Court held that the applied-for trademark lacks inherent distinctiveness since the impression created by the applied-for trademark “台灣寵物信託” (“Taiwan Pet Trust”) is still the same as that of the literal meaning of the constituent phrase, while there had been numerous accessible online news reports, magazine articles, and videos featuring “pet trust” to the extent that local consumers can readily perceive the connection between the phrase “Taiwan Pet Trust” and the designated services, regardless of whether the phase “Taiwan Pet Trust” was first coined by the Applicant.
The IPC Court also held that the evidence submitted by the Applicant, including website materials and media reports, merely proved that consumers would regard the phrase “Taiwan Pet Trust” as a description of the related services but was insufficient to prove that the phrase “Taiwan Pet Trust” had become a source-identifier of the Applicant's services and acquired distinctiveness.
The aforesaid case exemplifies the common practice whereby the function or characteristic of a new product or service often serves as inspiration for the creation of a trademark adopted for that product or service. Two of the widely known examples in Taiwan are the trademark “Taiwan High Speed Rail” designated for use on “land transport of passengers and goods”, etc. in Class 39, and the trademark “Taiwan Pay” used on “banking, credit card payment processing, third-party payment services”, etc. in Class 36. Although the said two trademarks are directly descriptive of the designated services, they have been granted registration under Reg. Nos. 142416 and 1930367, respectively, since they have acquired distinctiveness through long-term and extensive use by the trademark owners.
Therefore, if a term coined for a new product or service is directly and obviously descriptive of the product or service, to qualify for trademark registration, the term should be extensively used as a trademark to acquire distinctiveness and become a source-identifier.