Double challenge faced by trademarks incorporating geographical indications


Geographical names are frequently used by trademark owners in association with their goods and/or services to indicate the place of origin, style, taste, or other features thereof.  For example, 北海道 (“Hokkaido” in English), the northernmost prefecture of Japan, is famous for husbandry, among others. The marking of "北海道" on dairy products may lead consumers to consider the products or the ingredients as originating in the particular place.  

On the other hand, a geographical name may be simply used as a trademark wholly or partly without any connection with the place.  To name one,  "玉山" (“Yu Shan” or “Mountain Jade” in English), the highest peak of Taiwan, is registered and used as a trademark in Taiwan for banking services not linked to the mountain at all. 

However, in a recent decision made by the Taiwan Supreme Administration Court (SAC) to ultimately refuse registration of a trademark consisting of a geographical name, apart from assessing the distinctiveness of the applied-for mark, the SAC pointed out serious concern about the likelihood of misdiscriptiveness due to use of the mark.  We will be reviewing the local practice in the examination of inherent registrability of trademarks in terms of distinctiveness and descriptiveness, which are the two major challenges for geographical names containing marks, as well as the impact of the SAC decision.

Challenge 1: Distinctiveness

In the 2022 version of the “Guidelines of Examination of Trademark Distinctiveness” implemented by Taiwan Intellectual Property Office (TIPO), Section 4.5, entitled “geographical names or other signs that indicate places of origin”, stipulates that the term “geographical names” includes names of geographical districts and natural features ranging from names of nations, provinces, counties, cities to streets for the former and names of oceans, rivers, lakes, mountains, or deserts for the latter.  To determine whether a geographical name incorporated in a trademark is descriptive, the Guidelines further provide that the natural environment, industry development, and business activities of the districts should be taken into account to see if they are related to the characteristics of the goods or services. In the negative, a geographical name containing trademark would be considered an arbitrary mark in possession of distinctive character, particularly if  there is doubt about providing goods or services in such place, and by no means would consumers deem the trademark as an indication of the place of origin, or a description implying the relationship between the geographical district and the goods and/or services.  On the contrary, except for certain special industries such as aviation and telecommunications, where service providers tend to adopt trademarks by combining a geographical name with the services concerned, geographical names containing trademarks are deemed indistinctive. In the test for distinctiveness of a trademark composed of a geographical name and other words the key point to consider is whether such a combination is able to exclude association of the geographic name with the goods or services at issue.

By way of example, the mark "東京本舖" (Tokyo First Store) when used on cakes and breads was considered simply a description of the goods, while "東京美人" (Tokyo Beauty) intended for soft drinks or alcoholic beverages was held registrable.

Challenge 2: Likelihood of Misdiscriptiveness of the Place of Origin

The Trademark Law prohibits registration of any trademark that is likely to mislead the public in respect of the nature, quality or place of origin of goods or services.  According to the applicable Examination Guidelines, a trademark composed of a geographical name shall be deemed misdescriptive when “the geographical area is famous for a certain industry or enjoys reputation for the designated goods or services, and therefore may exert a substantial impact on consumer purchase decision.” Especially when a geographical area is well known for certain goods and services because of its geographical environment or cultural features, consumers are more likely to make purchase decisions based on the geographic indication. 

It is noteworthy that the SAC recently released a decision addressing the inherent registrability of the mark “Boy London”.  To be specific, the SAC directly affirms the IP Office's original decision refusing registration of the mark “Boy London” in Classes 9, 35, 37 and 44 in respect of, inter alia, “sun glasses”, “retailing and wholesale of eyeglasses”, “repair of eyeglasses”, and “optician services”, on the ground of likelihood of misleading consumers as to  the place of origin of the goods/services.  Unfortunately, the SAC decision might reduce the chance of registering a trademark incorporating a famous city name.  As commented by the SAC,

“The trademark at issue “Boy London” consists of two words “Boy” and “London”.  In view of the local people’s common awareness of the term “London”, which denotes a world renowned metropolitan city, the capital of the U.K., as well as the center of politics, culture, arts, and fashion, inclusion of the word “London” strongly suggests the connection between the subject trademark with the London city.  Therefore, as far as the trademark “Boy London” is concerned, the element “London” will attract more attention from consumers.  In the content of the designated classes, consumers of whatsoever sex and age could be targeted by the services concerned, rendering the element “Boy” a common noun to be ignored easily.   In other words, misconception could arise among consumers that the goods and services branded with the trademark originate from or associated with London city.  To conclude with, use of “Boy London” as a trademark might mislead consumers as to the quality, nature, or place of origin of the designated goods and services.”

Moreover, the SAC decision further indicated the following:

In the process of review of distinctiveness by the IP Office, in order to reverse the likelihood of misleading objection, applicants are permitted to claim distinctiveness acquired in the course of trade thereby distinguishing their goods/services from those of others by way of submitting use evidence.  On the other hand, use evidence submitted under the Guidelines of Examination of Trademark  Distinctiveness may overcome the inherent registrability refusal but not the refusal based on likelihood of misleading consumers as to the nature or place of source of the designated goods/services .”

As can be concluded from the reasoning behind the SAC decision, even if a mark in its entirety is devoid of association with the geographical area, the more awareness of the geographical name incorporated in a trademark amongst Taiwanese consumers, the greater possibility that the court may deem the geographical name as the attractive portion to the consumers hence misleading them no matter whether the district indeed enjoys reputation for the designated goods or services.   Worse still, it could prevent applicants from attempting to argue against the misdiscriptiveness objection by proving the well-known status in the market to such extent that consumers would not readily associate the mark with the particular district.   

Takeaway: Not to include a geographical name as part of a mark for registration purposes, if at all possible

In summary, filing a trademark incorporating a geographical name could face two major challenges, namely distinctiveness and misdescriptiveness. To apply the guidelines laid down by the SAC decision, notwithstanding that an applicant can submit evidence of use in support of the claimed distinctiveness, once the geographical name element is deemed as “the attractive part in the minds of consumers”, the applicant will be left no choice but to argue based on the literal meaning underlying the mark.  Subjective viewpoint would inevitably be involved in the assessment and significantly affect the inherent registrability of trademarks consisting of geographical names.

Although it remains to be seen if the ruling of the SAC decision will be endorsed as a general rule, under the circumstances that there is no objective connection between the particular geographical name and the goods/services themselves, and that the mark at issue does not fall within the category of “arbitrary marks”, for the sake of smooth prosecution, it is highly recommended to avoid using any geographical name when designing a trademark.