Registrability of CONFUCIUS re-examined

The Taiwanese Intellectual Property Office (TIPO) has re-examined the registrability of the name of the famous Chinese philosopher Confucius (in Chinese characters) as a trademark.

Under the Trademark Act, the name of an individual is inherently registrable, except if it is identical to the name of:

• Dr Sun Yat-Sen (Chinese revolutionary and political leader who is often referred to as the 'father' of the country);
  
  
• a president of Taiwan; or
  
  
• a famous living individual.

The China National Office for Teaching Chinese as a Foreign Language of the Ministry of Education, which was founded in 1987 and is dedicated to the teaching of the Chinese language, has established several Confucius Institutes worldwide. Since March 2007, it has obtained several trademark registrations for the name Confucius for goods in Class 16 (including stationery, books and periodicals) and services in Class 41 (including education, publication of books, publication of books and magazines online and organization of seminars) of the Nice Classification, namely:

• CONFUCIUS (in Chinese characters) (Registration 1260020);
  
  
• CONFUCIUS INSTITUTE (in Chinese characters) and CONFUCIUS INSTITUTE (Registrations 1253551 and 1258499);
  
  
• CONFUCIUS INSTITUTE (in Chinese characters) (and design) and CONFUCIUS INSTITUTE (and design) (Registrations 1253550 and 1258500);
  
  
• CONFUCIUS CLASSROOM (in Chinese characters) and CONFUCIUS CLASSROOM (Registrations 1253548 and 1258497); and
  
  
• CONFUCIUS CLASSROOM (in Chinese characters) (and design) and CONFUCIUS CLASSROOM (and design) (Registrations 1253549 and 1258498).

However, in November 2007 the TIPO re-examined the registrability of CONFUCIUS (in Chinese characters) and found that the mark lacked distinctiveness. The TIPO filed an invalidation action against the mark ex officio and requested that the National Office for Teaching Chinese file a defence. The case is still pending.

To avoid similar cases in the future, the TIPO intends to provide guidance on the registrability of the name of historic figures in its "Examination Guidelines on the Distinctiveness of Trademarks" in 2008.

Kwan-Tao Li and Joseph S Yang, Lee and Li Attorneys at Law, Taipei