Under Article 29.1.1 of the Taiwan Trademark Act, a trademark cannot be registered if it lacks distinctiveness by consisting solely of terms that describe the quality, purpose, materials, origin, or other characteristics of the designated goods or services. As such, geographical names are not eligible for trademark registrations if they are directly associated with the designated goods or services in the mind of the relevant consumers. The rationale is similar to that applies to other descriptive marks indicating other objective characteristics of the goods and services. That is, permitting one business to claim exclusive rights to a term indicating geographic origin would unfairly hinder competitors from accurately describing their products or services from the same region.
However, Paragraph 2 of the same article sets forth an exception. If a trademark has, through extensive use in commerce, become a source-identifier distinguishing the applicant’s goods or services from those of other sources, the “geographically descriptive” refusal shall not apply.
The Taiwan Intellectual Property and Commercial Court (“IPC Court”) has recently issued a Judgment under Docket No. 113-40 in March 2025, affirming that a mark initially considered unregistrable under Article 29.1.1 may become eligible for trademark registration if it has acquired sufficient secondary meaning.
Background on the “YORKSHIRE TEA” case
In 2017, BETTYS & TAYLORS GROUP LIMITED (BETTYS & TAYLORS) filed an application for the mark “YORKSHIRE TEA” in respect of the goods, such as: “tea bag, herbal flower tea, fruit tea, tea sachet, iced tea” etc. in class 30. During the examination process, the Taiwan Intellectual Property Office (IP Office) issued an office action tentatively rejecting the application on the grounds that relevant consumers would perceive the mark “YORKSHIRE TEA” as indicating that the designated goods originate from the YORKSHIRE region of England, and therefore the mark lacks inherent distinctiveness for being geographically descriptive. After BETTYS & TAYLORS filed a response arguing against non-distinctive rejection by submitting evidence of use, the mark was registered under Reg. NO. 2179600 upon a showing of secondary meaning under Article 29.2 of the Trademark Act.
Thereafter, Full Fill Industrial Co., Ltd. (Full Fill) filed an invalidation action in 2022 alleging that said mark “YORKSHIRE TEA”, in the mind of the relevant public, indicated the geographical origin of the goods in class 30 and thus was geographically descriptive of the designated goods. Hence, the registration of the mark “YORKSHIRE TEA” shall be revoked in accordance with Article 29.1.1 of the Trademark Act, Full Fill argued.
The IP Office found the invalidation groundless and issued a decision dismissing the invalidation filed by Full Fill. After the Board of Appeals upheld the IP Office’s decision, the case was appealed to the IPC Court.
The IPC Court’s opinion
While the IPC Court found that the mark consisting solely of the plain wording "YORKSHIRE TEA" in respect of “tea bag, herbal flower tea, fruit tea” in class 30 lacks inherent distinctiveness, it also found that, as shown by evidence submitted by BETTYS & TAYLORS, the mark “YORKSHIRE TEA” had been continuously used since its creation in 1977 for tea products blended specifically to suit different water types in YORKSHIRE region of England.
Moreover, between 1992 and 2016, articles and reports relating to the “YORKSHIRE TEA” branded products have been published in various media, including the “Campaign The National Trust Newsletter”, the British TV program “Heartbeat”, the print publication “THE STAGE”, articles on the Financial Times news website, the Sainsbury’s supermarket magazine, and the blog “The Classic of British Taylors – Yorkshire Tea”, etc.
Further, between 2012 and 2017 in Taiwan, numerous consumer bloggers shared their experiences of purchasing or drinking Yorkshire Tea at Louisa Coffee, a well-known Taiwanese coffeehouse chain. Besides, the “YORKSHIRE TEA” branded products have also been available for purchasing on online shopping platforms popular among local consumers, such as Rakuten, PChome, and momo.
Additionally, from 1998 to 2017, BETTYS & TAYLORS has been selling its branded products globally through various distributors in countries such as the United States, Australia, the United Kingdom, Canada, Japan, Taiwan, South Korea, Hong Kong, and Singapore. The invoices issued to these distributors either featured product packaging labeled “YORKSHIRE TEA” or included “YORKSHIRE TEA” in the product description section.
In view of the foregoing, the IPC Court concluded that, at the time of filing, the mark “YORKSHIRE TEA” had become a source-identifier for BETTYS & TAYLORS’s products in the course of trade as a result of its extensive use both domestically and internationally. Accordingly, the IPC Court affirmed that the mark “YORKSHIRE TEA” shall be eligible for trademark registration under Article 29.2 of the Trademark Act and thus dismissed the administrative litigation filed by Full Fill.
Takeaways
While Article 29.1.1 of the Trademark Act bars registration of a mark that is “geographically descriptive” of the applicant’s goods, successful registration may still be achievable—albeit with considerable difficulty.
First, under the local practice, for a “geographically descriptive” refusal to be raised, it is required to determine whether the geographic name has been reasonably understood by the local consumers as indicating the origin of the concerned goods or services. Therefore, if the geographic meaning of the mark is obscure or remote, it may be possible to argue that the statutory refusal shall not apply.
Second, the applicant may seek to establish that the mark has acquired secondary meaning through extensive use in order to warrant trademark protection. From our experiences, in order to enhance the chance of success in overcoming a “geographically descriptive” refusal, it is crucial to develop an effective response strategy tailored to each individual case, and to thoroughly collect evidence of use in advance, with careful attention to the quantity, duration, and nature of the materials submitted.