Paragraph 1, Article 63 of Taiwan Trademark Act prescribes that “ the IP Office shall, ex officio or by request, revoke the registration of a trademark if such trademark has become a generic mark or term, or common shape for the designated goods or services”. Since a registered trademark is entitled to a presumption of validity, courts are generally hesitant to declare that a registered trademark has become genericized.
Notwithstanding, it is worth noting that the Taiwan Intellectual Property and Commercial Court (IPC Court) has recently issued a Judgment under Docket No. 110-2 in May 2022, finding that the IP Office and Board of Appeals erred in maintaining the validity of the trademark registration for “TSA LOCK”, and hence ordering said mark to be revoked since it has become a generic term and devoid of distinctive character.
Background on the “TSA LOCK” case
Travel Sentry Inc. filed in 2015 an application and subsequently obtained a trademark registration for “TSA LOCK” under Reg. No. 1227603 in respect of “mental locks for luggage” in class 6, “bag packs, athletics bas, gym bags, luggage” in class 18, “non-metal locks for luggage” in class 20 and “straps for luggage” in class 22. Safe Skies LLC filed in 2018 a cancellation action alleging that said mark “TSA LOCK” has become a generic term and shall be revoked in respect of all the designated goods.
The IP Office rendered a decision deeming that said trademark registration to be revoked in respect of classes 6 and 20, but the validity shall be maintained in respect of classes 18 and 22. After the Board of Appeals upheld the IP Office’s decision, the case was appealed to the IPC Court.
The IPC Court’s opinion
A. Standard for determining whether a registered trademark has become generic
It is indicated in the IPC Court Judgment under No. 110-2 that a trademark becomes generic when the mark falls into common usage so that it refers to a common name of product or service and is no longer perceived by the public as being associated with a particular origin. On this score, such trademark shall no longer be eligible for trademark protection since this would grant monopoly in the common product name and impair competition. Further, according to the Supreme Administrative Court’s precedent, the benchmark date for determining whether a registered trademark has become generic is the filing date of the cancellation action filed against the contested trademark.
The IPC Court further held that distinctiveness must be assessed first, by reference to the goods or services in respect of which registration was sought, and, second, by reference to the relevant consumers’ perception of the mark, namely whether the “primary significance of the registered mark” to the relevant consumers has become a generic term of the goods or services. As a registered trademark is presumed to be valid, it is thus for the party who challenges the validity of the registration to bear the burden to establish that the trademark has been perceived by a large number of consumers as a common product name, rather than a source-identifier.
B. Determination of genericide of the mark “TSA LOCK”
Upon examination of the clippings from US newspapers and magazine articles, extracts of Linuxpilot blogs and letters from US official authority, the IPC Court held that these evidential materials were sufficient to demonstrate that the characters “TSA” contained in the contested mark “TSA LOCK” had been perceived by the relevant public as simply an abbreviation for the US “Transportation Security Administration”. Besides, the US Customs officers routinely screen passengers’ luggage for flight security check and would open the luggage from time to time for closer inspection whenever they deem it necessary. To ensure that luggage is easily accessible to the officers, the so-called “TSA LOCK” is manufactured and specifically designed to be used with a “universal master key”, which is only available to the US Customs. As such, the US Customs officers could open the passengers’ luggage without the need to break the lock.
Based on the printouts from several websites of local famous retailers, such as PChome and Save & Safe, the IPC Court found that numerous local luggage manufacturers commonly use the term “TSA LOCK” to describe the attributes of their goods, indicating that they are equipped with a specific lock matching the “universal master key” used or approved by US Customs.
In view of the foregoing, the IPC Court concludes that from the perception of relevant enterprises and consumers, the term “TSA LOCK” has been in widespread use as a common product description rather than as a trademark to distinguish source of the goods. In accordance with the “primary significance test”, since the mark “TSA LOCK” has lost the essential function of a trademark guaranteeing the origin of the marked goods, it shall be deemed to have become generic and devoid of distinctive character. As such, the IPC Court found the IP Office and Board of Appeals erred in dismissing cancellation action against the mark “TSA LOCK” in classes 18 & 22, and hence ordered the IP Office to re-issue a decision revoking the trademark registration for “TSA LOCK” in said classes.
Trademarks that were inherently distinctive at the time of registration can be vulnerable to cancellation action if they become generic afterwards. To prevent a trademark from being genericized, it is imperative to always use the appropriate trademark symbol, ie: TM or ® to apprise consumers that the term is a brand name. Besides, as a trademark can become generic through third parties’ misuse as a common product name, monitoring others’ use of the mark periodically and taking active measures to stop their misuse in the marketplace is also recommended.