SAINT ISLAND INTELLECTUAL PROPERTY GROUP

According to Taiwan’s practice, a surname used in connection with goods or services is generally for indicating the surname of the supplier, not as a source identifier. Therefore, in principle, an applicant applying for registration of a surname needs to prove that the surname has acquired distinctiveness through long-term and extensive use.

Jason Wu is a Taiwanese-Canadian fashion designer based in New York City. He is most famous for designing the dresses of Michelle Obama on several occasions, including during the first and second inaugurations of American President Barack Obama. He filed an application in Taiwan for registration of “MISS WU”, a plain word mark, in respect of clothing and other goods. Upon examination, the Trademark Office was of the opinion that since the mark was a mere combination of a surname and a form of address and “Wu” is a common surname in Taiwan, the mark did not possess inherent distinctiveness for registration purposes. Although information such as introduction and sale of “MISS WU” products on foreign websites was submitted during prosecution of the application, the Trademark Office rejected the application. The Trademark Office’s reasons for rejection were mainly that since the designated goods had not been imported into Taiwan and there was insufficient concrete evidence to show that there had been marketing or sale of products under “MISS WU” in the Taiwanese marketplace, it could not be deemed that the mark had been recognized by the relevant consumers in Taiwan as a source identifier of the designated goods and had thus acquired distinctiveness.

The rejection has prompted much discussion. The Trademark Office’s reasons for rejection were disputable especially in view of Jason Wu’s fame in the fashion industry. The Trademark Office has commented that the mark “MISS WU” cannot be deemed to have acquired distinctiveness based on the evidence submitted by Jason Wu, but if additional evidence showing that the mark has acquired distinctiveness in the Taiwanese marketplace is filed, the mark will be allowed to register.