On May 8, 2024, Petitions and Appeals Committee of the Ministry of Economic Affairs (“Committee”) denied the petition filed by O-ONE INTERNATIONAL LIMITED COMPANY (“O-One”), affirming the determination of Taiwan’s IP Office (“IPO”) that O-One’s no. 2268370 trademark (see below) should be canceled due to lack of distinctiveness (Ching-Fa-Zi No. 11317301960).
The contested trademark was filed by O-One on June 10, 2022, and granted on December 16, 2022, designated for use in goods under class 9, including protective cases for mobile phone, power bank devices, mobile phone cases, etc. Third party EVOLUTIVE LABS CO. LTD. (“Evolutive”) filed a cancelation action thereagainst on February 6, 2023, for violating, among the others, Article 29.1.1 of Trademark Act. IPO sided with Evolutive, finding that the contested trademark should be canceled. O-One appealed IPO’s determination to the Committee.
The Committee affirmed IPO’s finding, reasoning that:
- Per Article 29.1.1 of Trademark Act, a trademark shall not be registered if such a mark consists solely of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services.
- O-One’s contested trademark presents a black block, on which there is a white circle with a thick line on its right side. According to the records, prior to the registration of the contested trademark, in 2020, Apple Inc. (“Apple”) has introduced the MagSafe technology for its iPhone 12 series. The built-in circular array of magnet and the charging coil on the back of the iPhone could ensure a strong and automatic bond between iPhone and the charging device, which expedites the charging process. Apple also introduced relevant protective cases and charging devices for its MagSafe technology. On those accessories, a circle with a linear oval pattern underneath could be seen to tell the consumers the corresponding wireless charging areas of their phones, so that the phone could be attached to the accessories more accurately, thereby avoiding inefficient charging.
- Records also show that prior to the registration of the contested trademark, the products in compliant with MagSafe technology, i.e., protective cases and charging devices, have been introduced in the relevant industries and markets. Among those products, similar patterns are used. As such, consumers would consider the pattern featured in O-One’s contested trademark as mere description regarding function or nature of the goods rather than mark that identifies the source of goods. The contested trademark is not distinctive and has violated Article 29.1.1 of Trademark Act.
O-One argued that the pattern featured in the contested trademark is originated from its company name “O” and “One”. The Committee did not find it persuasive, because O-One’s concept behind its trademark is not the factor to be take into account in determining the distinctiveness of the mark. Instead, the Committee will look to objective factors such as the relationship between the mark and the designated goods or services, usage by peers in the industry, usage of trade, and applicant’s own use.
Based on the Committee’s above reasoning, when proving distinctiveness of a specific trademark, one should focus on evidence showing the consumers’ impressions formed by such trademark, namely, whether such trademark has been used by peers, actual use in the relevant market, and applicant’s own use. Applicant’s personal view on the design of such trademark is not a decisive factor.