According to Article 30.1.9 of Taiwan’s Trademark Act, a trademark shall not be registered if it is identical with or similar to a geographical indication (GI) that identifies wine or spirits as originating in a certain region or country, and is designated for use on wine, spirits or related goods. In this context, one question arises then: Will a Chinese word mark pronounced substantially the same as or highly similar to a GI be banned from registration? This issue is particularly salient when the consuming public in Taiwan is more accustomed to using Chinese version marks to refer to wine or sprit products.
In general, in the test for similarity, Taiwan’s IP Office (TIPO) would take the appearance, concept, or pronunciation of the two trademarks concerned as the essential aspects for comparison to determine whether their co-existence in the market is likely to cause confusion. Given that a Latinate word could be transliterated into Chinese characters in varying ways, TIPO had a tendency to regard a Chinese word mark to be dissimilar to a GI composed of a Latinate word(s) in view of their obvious distinctions in outer appearance, much less weight being placed on the sound resemblance thereof. Therefore, those Chinese word marks which carry pronunciations identical with or similar to a GI could be registered and used upon wine/spirits, and this unavoidably placed authorized wine or spirits distributors in a less competitive position on the wine/spirits market in Taiwan.
Notwithstanding the foregoing, the conventional norms and practice were seen challenged recently.
Two Invalidation Actions were filed under Article 30.1.9 of the Trademark Act against the trademarks “托凱” and “皇家托凱” (皇家 means Royal) registered in 2014 for use upon spirits (other than beer) and wine by reasoning that “托凱” is the Chinese transliteration of the GI “Tokaj/Tokaji” which identifies wine or spirits as originating in a Hungarian wine/spirits region. Upon examination, TIPOdeemed the Invalidation Actions to be well-grounded and canceled registration of the two trademarks.
TheTIPO’s Decisions in favor of the invalidation petitioner were then appealed to the Board of Appeals, the IP Court, and all the way up to the Supreme Administrative Court.
On November 21, 2019, the IP Court rendered a Judgment, upholding theTIPO’s Decisions. This Judgment, finally affirmed by the Supreme Administrative Court on March 12, 2020, is particularly notable because it suggested that Taiwan’s GI protection regime had entered into a new era.
In these two Invalidation Actions, while the registrant did not debate overTIPO’s assertion that “Tokaj/Tokaji” is a GI, it claimed that: (i) “托凱” and “皇家托凱” do not have any meaning and are inherently distinctive coined trademarks neither derived from any existing terms nor transliterated from “Tokaj/Tokaji”; and (ii) since “托凱” and “皇家托凱” are not similar to “Tokaj/Tokaji” in either appearance or concept, the validity of the two registered marks should be unquestionable.
The IP Court, after hearing the case, found that, prior to the filing of the trademarks “托凱” and “皇家托凱” in dispute, apart from “托凱,” there had indeed been a number of trademarks, including “拓凱,” “多凱,” and “托卡伊” that pronounced similar to “Tokaj/Tokaji” and were reckoned as the Chinese transliterations of “Tokaj/Tokaji” as well in the then prevailing market. According to the file records, however, “托凱” was the most common or customary Chinese word mark used to identify wine or spirits originating in “Tokaj/Tokaji.” Moreover, that the Hungarian Trade Office in Taipei identified “Tokaj/Tokaji wine/spirits” as “托凱wine/spirits” on its official website, further witnessed that “托凱” was not coined by the registrant. The IP Court thus held that, since consumers, at the first glance of the “托凱” mark, would regard “托凱” as the Chinese equivalent of “Tokaj/Tokaji” given the resemblance in pronunciation and concept between “托凱” and “Tokaj/Tokaji,” the “托凱” and “皇家托凱” marks being similar to Tokaj/Tokaji” shall be ousted from the Register to avoid confusion.
The IP Court’s finding suggested that a Chinese wordmark could be resembling to a GI composed of a Latinate word(s) when they have substantially identical or similar pronunciation, even if said Latinate word does not have one single, standardized Chinese transliteration on the market.
Several years ago, TIPO deemed “詹姆士．軒尼詩 干邑新世代” (which means “James Hennessy Cognac New Era”) to be similar to “cognac” and “高原典藏蘇格蘭威士忌” (which means “Highland Collection Scotch Whisky”) to be similar to “Scotch whisky,” and refused registration of these two Chinese word marks. However, given that local consumers already have in mind that “干邑” corresponds to “cognac” and “蘇格蘭威士忌” corresponds to “Scotch whisky,” respectively, these cases could not serve as an indication that the IP Office has taken a more lenient attitude toward the recognition of the scope of protection afforded by a GI. In other words, as “干邑” contained in the Chinese word mark “詹姆士．軒尼詩 干邑新世代” and “蘇格蘭威士忌” contained in the Chinese word mark “高原典藏蘇格蘭威士忌” have already created a link of homogeneity to the Latinate word marks “cognac” and “Scotch Whisky,” it is less controversial that theses two Chinese word marks are confusingly similar to “cognac” and “Scotch Whisky.” The “Tokaj/Tokaji” wine/spirits, on the other hand, is less famous on the local market and does not have a standardized Chinese transliteration, and therefore the examination outcome of the two Invalidation Actions against “托凱” and “皇家托凱” marks a shift in the position of TIPO relative to the protection of GI. As a consequence, it becomes more realistic for a wine/spirits GI owner to expect to prohibit a third party from applying for registration a Chinese word mark pronounced similar to the GI.
However, it should still be borne in mind that only if a GI has been registered can a third party be banned from using a Chinese word mark carrying a pronunciation similar thereto. In Taiwan, a GI can be registered as a certification mark or a collective trademark. For example, “蘇格蘭威士忌,” “Scotch Whisky,” “愛爾蘭威士忌,” “Irish Whisky,” and “NAPA VALLY” are registered as certification marks. “CHIANTI CLASSICO,” “BAROLO,” “BARBARESCO,” “VERNACCIA DI SAN GIMIGNANO,” and “琉球泡盛” are registered as collective trademarks. For more information regarding the steps to seek protection of a GI, please refer to our another article “GI protection in Taiwan” available on the website of Saint Island at http://www.saint-island.com.tw/EN/Knowledge/Knowledge_Info.aspx?IT=Know_0_3&CID=574&ID=1622.