The trademark at issue was filed by a Taiwanese company designating goods in I.C.18, such as purses, wallets and umbrellas. TIPO regarded that the trademark at issue consisted exclusively of different kinds of geometrical patterns, so that it was not distinctive according to Article 29 I (3) of the Trademark Act. Moreover, the evidence of use submitted by the applicant thereof was unable to prove that trademark at issue had acquired distinctiveness through long-term and extensive use. Therefore, TIPO rejected the application of the trademark at issue.
Article 29 I (3):
A trademark shall not be registered if it consists exclusively of other signs which are devoid of any distinctiveness.
The applicant then filed an administrative appeal up to the MOEA against the decision made by TIPO but the MOEA deemed the appeal was unsustainable, so dismissed the appeal as well. After that, the applicant filed an administrative litigation up to the IP Court. Unfortunately, the IP Court sustained the TIPO’s decision that the trademark at issue was not distinctive enough to be registered as a trademark.
According to Article 18 of the Trademark Act, a trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. The term “distinctiveness” used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.
In addition, a trademark shall not be registered if it consists exclusively of other signs which are devoid of any distinctiveness, but it shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant due to Article 29 I (3) and Article 29 II of the same Act.
In the IP Court’s opinion, the trademark at issue consisted of 4 stylized diamond patterns respectively arranged vertically and horizontally to form a big diamond which was deemed an ornamental pattern only. When it was used on the goods, such as wallets, purses….and umbrellas, it was unable to make relevant consumers recognize it as a sign identifying the source of goods or distinguish such goods from those of others, for leather products or umbrellas were usually decorated by a variety of lines, basic geometrical patterns or ornamental patterns. Therefore, the trademark at issue gave an impression that it was an ornamental pattern on the goods rather than a sign identifying the source so it was not distinctive.
Although the plaintiff’s affiliated company has registered the elements of the trademark respectively at issue in I.C.18 (Reg. No.1066756, No.1066757 and No.1066758), the combination of those elements, i.e. the trademark at issue, was not consequentially distinctive. Whether a device is distinctive, it should be comprehensively evaluated by what kind of impression the entire trademark gives to the customers. Even if each element of a trademark is distinctive separately, it does not assure that the combination of all elements will be distinctive as well and vice versa. For instance, combining several distinctive elements together as a continuous and infinitely extendible pattern will not be distinctive enough to be a trademark. Such continuous and infinitely extendible pattern will be regarded as the ornamental pattern on the goods rather than a sign identifying the source.
The applicant has filed several trademarks under similar situation in Taiwan, which were unfortunately not allowed to register in Taiwan by the TIPO nor won the administrative litigation.
Source: TIPO Newsletter issued on December 05, 2014
Delivered by: Sandy WANG (Ms.) / Senior Partner
JAW-HWA INTERNATIONAL PATENT &
TRADEMARK & LAW OFFICES
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Taipei, Taiwan, R.O.C.
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www.jaw-hwa.com.tw
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