Trademarks in Taiwan incorporating geographical indications face two-fold challenge

The Taiwan Supreme Administration Court (SAC) has refused the registration of a trademark consisting of a geographical name in a decision that is attracting significant domestic attention. Apart from assessing the distinctiveness of the mark in question, the SAC raised serious concerns about the likelihood of misdescription in its use.   Trademark owners in Taiwan frequently use geographical names in association with their goods or services to indicate place of origin, style, taste or other features. For example, ‘北海道’ (Hokkaido in English), the northernmost prefecture of Japan, is famous for husbandry. Consequently, marking ‘北海道’ on dairy products may lead consumers to believe that the products or the ingredients within originated in the region.   Alternatively, a geographical name, or any part of one, may be used as a trademark without any tangible connection to the place. A good example is ‘玉山’ (Yushan or Mountain Jade in English),the highest mountain in Taiwan, which is registered and used as a trademark in Taiwan for banking services unrelated to the landmark.

Challenge 1: distinctiveness

In the 2022 version of the Guidelines of Examination of Trademark Distinctiveness implemented by the 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’ covers two categories:  geographical districts and natural features. The former includes the names of nations, provinces, counties, cities and streets, while the latter comprises the names of oceans, rivers, lakes, mountains and deserts. To determine whether a geographical name incorporated in a trademark is descriptive, the guidelines further provide that the district’s natural environment, industrial development and business activities should be considered to see if they relate to the characteristics of the goods or services.

A trademark containing a geographical name would be considered an arbitrary mark in possession of distinctive character if there is any doubt about the goods or services being provided in that place and if consumers deem the trademark to be unlikely as an indication of the place of origin. The same is true if there is no implication in the good or service’s description of a relationship between it and the geographical district.

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 non-distinctive. In the test for distinctiveness here, the critical point to consider is whether the combination of the geographical name and other words can exclude the association of the place in question 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 misdescription of the place of origin

Taiwan’s Trademark Law prohibits the registration of any trademark that is likely to mislead the public about 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”. This applies especially when a geographical area is well known for certain goods and services due to its environment or cultural features; in cases like this, 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’. Specifically, the SAC directly affirmed the Taiwanese IP Office’s original decision to refuse the registration of the mark in Classes 9, 35, 37 and 44 in respect of “sunglasses”, “retailing and wholesale of eyeglasses”, “repair of eyeglasses” and “optician services”, due to the likelihood of it misleading consumers as to the place of origin of the goods or services. Unfortunately, the SAC decision might reduce the chance of registering a trademark incorporating a famous city name.  In particular, the decision stated:

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 United Kingdom, as well as the centre of politics, culture, arts and fashion, the 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 goods and services concerned, rendering the element “Boy” a common noun to be ignored easily. In other words, misconceptions could arise among consumers that the goods and services branded with the trademark originate from or are associated with London. To conclude, the 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, 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. It is worth noting that the use of evidence submitted under the Guidelines of Examination of Trademark Distinctiveness may overcome the inherent registrability refusal but not the refusal based on the likelihood of misleading consumers as to the nature or place of the source of the designated goods/services.

As can be concluded from this reasoning, even if a mark is entirely devoid of association with the geographical area, the more awareness of the geographical name incorporated in a trademark among Taiwanese consumers, the greater possibility that the court may deem it the attractive portion to the consumers, hence misleading them no matter whether the district indeed enjoys a reputation for the designated goods or services. This could prevent applicants from arguing a misdescription objection by proving that consumers would not readily associate the mark with the district in question.    

Key takeaways

In summary, filing a trademark that incorporates a geographical name could face two major challenges: distinctiveness and misdescription. Notwithstanding the submission of evidence to support a distinctiveness claim, the guidelines laid down by the SAC’s decision dictate that once the geographical name element is deemed “the attractive part in the minds of consumers”, applicants will have no choice but to argue based on the literal meaning underlying the mark. This development means that subjective viewpoints would inevitably be involved in the assessment and significantly affect the inherent registrability of trademarks consisting of geographical names.

It remains to be seen whether the SAC’s decision will be endorsed as law. However, it remains highly recommended that applicants avoid using any geographical name when designing a trademark – even if the mark is not arbitrary nor features no objective connection to a geographical place – for the sake of smooth prosecution.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

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