The inside view of TIPO’s take on inherent and acquired trademark distinctiveness

Distinctiveness is crucial to a trademark registration in Taiwan. If a mark is deemed to lack distinctiveness, it can be refused registration under Article 29 of the country’s Trademark Act. Many jurisdictions have different definitions of ‘distinctiveness’, so it is vital for applicants to grasp the Taiwan Intellectual Property Office’s (TIPO’s) interpretation of this concept.

The distinctiveness examination has different requirements depending on the goods or services specified in the application. TIPO released the Distinctiveness Guidelines to address the issue of consistency in trademark examinations and objective examination criteria.

In the guidelines, TIPO sets out two types of distinctiveness – inherent and acquired. The former is a characteristic attributed to the trademark itself, independent of use; while, the latter – also known as secondary meaning – denotes trademarks that are not themselves distinctive but rather acquire distinctiveness later through use on the market.

Inherent distinctiveness in Taiwan

TIPO understands inherent distinctiveness as a characteristic that identifies the source of the goods or services without conveying or explaining information relevant to the goods or services. Trademarks with inherent distinctiveness are further classified into coined signs, arbitrary signs and suggestive signs, according to the degree of distinctiveness.

The designation ‘coined sign’, also referred to as a ‘fanciful sign’, comes from the use of an original or made up mark. Such trademarks are deemed to be the most distinctive because competitors cannot use them to denote or explain the function of the goods or services. Well known examples of coined marks in Taiwan include GOOGLE and TOYOTA.

An ‘arbitrary sign’ consists of any existing words, phrases, or things that are not at all descriptive of the designated goods or services or their quality, function or other features. Registered arbitrary trademarks in Taiwan include APPLE for computers, LACOSTE for clothes and SPRING for restaurants or hotels.

A ‘suggestive sign’ uses metaphor or simile to refer to quality, function, or other related ingredients, natures, or attributes of the goods or services. Although these are easier for consumers to remember, competitors do not necessarily or commonly use them to describe the goods or services.

Suggestive signs are closely related to descriptive signs. On a case-by-case basis, factors set out by TIPO to distinguish descriptive signs from suggestive signs when examining a mark, include:

• the degree of imagination required from the consumer;
• the dictionary definition;
• common terms, phrases or media usage; and
• the degree of possibility that competitors may use the mark.

By exclusion, common examples of signs that are deemed to be devoid of inherent distinctiveness due to their inability to indicate a unique source are:

• single letters;
• model numbers;
• simple Arabic numbers;
• simple lines or basic geometrical patterns;
• ornamental patterns;
• surnames;
• combinations of titles and surnames;
• company names;
• domain names;
• common religious divinities;
• terms or signs;
• slogans;
• common greetings; and
• auspicious phrases or popular terms and idioms.

Acquired distinctiveness in Taiwan

Through use, the relevant public can recognise a mark as the trademark identifying the source of the goods or services. Accordingly, a descriptive sign or one that lacks inherent distinctiveness, but has acquired distinctiveness through use on the market, may also be registered if it is perceived by relevant consumers to indicate and distinguish a particular source. Successfully registered marks, for example, include ‘787’ used to denote airplanes and parts thereof and a slogan for beverages – 生命，就該浪費在美好的事物上   (‘life should be wasted on beautiful things’).

TIPO factors for distinctiveness determination

Factors that TIPO also utilises to evaluate distinctiveness include:

• considering facts and relevant evidence, based on connections between the trademark and its designated goods or services;
• the manner and status of competitors’ uses;
• the degree to which the trademark conveys information about the category of goods or services instead of acting as a source identifier;
• commonality and frequency of use by the industry of specific terms or phrases to describe the goods or services; and
• usage and trading methods on the perception of relevant consumers.

Comment

Distinctiveness is codified under Article 29 of the Taiwan Trademark Act. While the concept of distinctiveness is used across many jurisdictions, its practices and examination in Taiwan still differ from different countries and cultures. Although applications always require professionals with hands-on expertise, knowing how TIPO interprets distinctiveness will still be of significant benefit to international applicants.