According to Taiwan’s Trademark Act, a trademark shall not be registered if it comprises or is composed of an indication which is descriptive of the quality, intended use, raw material, place of origin and related characteristics of the designated goods or services unless the trademark has been used by the applicant to an extent in which it becomes capable of distinguishing the applicant’s goods or services from those of others in the market.
In spite of the provision provided in the law regarding use of a trademark, on December 22, 2022, the Supreme Administrative Court ruled to uphold the opinion of the Intellectual Property and Commercial Court (hereinafter referred to as IPC Court) and the Intellectual Property Office (hereinafter referred to as TIPO), revealing that long-term use of a descriptive trademark does not necessarily acquire a secondary meaning, since whether or not a trademark has obtained a secondary meaning still needs to be judged according to the actual mode of use
On May 8, 2008, an applicant applied for registration of a “Blue Diamond Shrimp” design designated for use on “non-live aquatic products, non-live shrimp, and shrimp” in Class 29. After examination, TIPO found that blue diamond shrimp is one of the shrimp species, which is highly descriptive of the nature of the designated goods, and hence does not have inherent distinctiveness for registration purpose. As for the use materials submitted by the applicant, they were regarded as being insufficient to prove that the mark has acquired a secondary meaning. Therefore, the trademark was refused registration.
Ten years later, on May 23, 2019, the applicant again filed three applications for trademarks containing the words “Blue Diamond Shrimp”(in Chinese), also designated for use on “non-live aquatic products, non-live shrimp, shrimp without shell and shrimp meat” in Class 29. In addition to arguing that “Blue Diamond” (in Chinese) is not descriptive of the designated goods, the applicant additionally submitted evidence of use, claiming that due to its widespread use for up to 10 years, consumers can ready identify the source of the goods from the words “Blue Diamond Shrimp” (in Chinese) which has been long-term and extensively used to acquire a secondary meaning and should be allowed to be registered. However, the applications were still rejected.
The applicant thus filed an administrative litigation for one of the three applications and the case was recently appealed to the Supreme Administrative Court. After reviewing the case, the Supreme Administrative Court consented to the opinion of IPC Court and TIPO, holding that “Blue Diamond Shrimp” (in Chinese) is indeed descriptive of the designated goods and does not have inherent registrability. As for the applicant's contention that “Blue Diamond Shrimp” (in Chinese) has acquired a secondary meaning, the court held that although the applicant submitted some use materials, it is manifested therein that “Blue Diamond Shrimp” (in Chinese) has been used as a trade name or a description of the product, instead of a trademark capable of identifying the place of source of the goods. In other words, lay consumers are apt to regard “Blue Diamond Shrimp” (in Chinese) as a description of the ingredients, raw materials and related characteristics of the goods. In addition, the use materials submitted by the applicant are unable to prove that “Blue Diamond Shrimp”(in Chinese) has acquired a secondary meaning through widespread use in the format of a trademark. The Supreme Administrative Court thus upheld the judgment of its lower court and dismissed the appeal.
The above case suggests that when a trademark is being put to use, the applicant ought to pay special attention to the actual mode of use. In other words, a trademark should not be used in the format of as a trade name or a description of the designated goods or services. Otherwise, even if a descriptive word or device has been widely used for a long period of time, it will still not be able to serve the function of identifying the source of the goods or services, and then obtain a secondary meaning for registration purpose.