Selina S. Y. Lin Ruey-Sen Tsai January 16 2023 BOY LONDON trademark application rejected for misleading consumers Lee and Li Attorneys at Law | Intellectual Property - Taiwan Selina S. Y. Lin, Ruey-Sen Tsai Intellectual Property FactsBackgroundTIPOIntellectual Property CourtSupreme Administrative CourtCommentFactsThe Taiwanese company Grace Optical Co, Ltd filed an application with the Taiwan Intellectual Property Office (TIPO) under the Ministry of Economic Affairs to register the mark BOY LONDON(1) for:"optical glass; eyeglass frames; sunglasses" in class 9;"retailing and wholesaling of eyeglasses" in class 35;"clock and watch repair, eyeglass repair" in class 37; and"optometrists' services, opticians' services" in class 44.BackgroundArticle 29 of the Trademark Act stipulates as follows:A trademark shall not be registered if it is devoid of distinctiveness in any of the following: 1. consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services. . . . 3. consisting exclusively of other signs which are devoid of any distinctiveness. Article 30 of the Trademark Act stipulates that a trademark may not be registered if it is likely to mislead the public as to the nature, quality or place of origin of the goods or services.According to the Supreme Administrative Court,(2) the following steps must be taken to assess whether a trademark would likely cause the public to be misled as to the quality, nature or place of origin of the goods or services in question under article 30-1(8) of the Trademark Act:Observe the overall appearance, concept or pronunciation of the device or wording in the trademark representation in question.Consider the impression conveyed to consumers by the mark.Evaluate the connection between the trademark and its designated goods or services.Look at actual instances of trading of such goods or services in the marketplace.Following these steps leads to a direct and objective judgment – on the basis of the knowledge and perception of consumers of such goods or services – with regard to the trademark itself about whether the place of origin or sale of the goods or the place where the services are provided as perceived by consumers differs from the nature, quality or place of origin thereof in actual use as perceived by consumers, such that consumers are likely to be misled.According to the Intellectual Property Court,(3) if the trademark has been used by the applicant and has become a mark of origin for the applicant's goods or services, the trademark may be still registered even if article 29 of the Trademark Act applies. However, if article 30 of the Trademark Act applies, whether a trademark applicant may provide evidence that the applied-for trademark has become a mark of origin for goods or services and then argue that this excludes the application of article 30 is an important disputed issue in trademark practice.TIPOThe TIPO found that the mark would likely mislead the public as to the place of origin of the goods or services for which it was registered. Therefore, the TIPO refused the mark's registration, citing article 30-1(8) of the Trademark Act.Dissatisfied with the disapproval decision, Grace Optical appealed the case to the Ministry of Economic Affairs, but its appeal was dismissed. Grace Optical filed an administrative suit with the Intellectual Property Court (now called the "Intellectual Property Court and Commercial Court"), pointing out that:the meaning of the trademark BOY LONDON was "a boy from London";the geographic sense (ie, the reference to the city of London) did not form part of the trademark's overall meaning;the mark was not likely to mislead the average consumer as to the quality, nature or place of origin of the goods for which the mark was registered; andthe mark should be deemed distinctive.Intellectual Property CourtThe Intellectual Property Court rendered its judgment on 19 September 2019.(4) It determined that the trademark at issue, BOY LONDON, consists of two words ("boy" and "London") rather than one word ("London"). It held that when an average person comes across a trademark in an alphabetic language, they tend to give more weight to the initial word. Thus, the visually striking part of trademark BOY LONDON was the word "boy", not "London", and it was the trademark at issue in its entirety – not the mark divided into "London" and "boy" – that the relevant consumers would recognise. From a direct and objective perspective, the trademark at issue would not cause the relevant consumers to wrongly see the term "boy from London" or "London" as identical or similar to BOY LONDON.The trademark at issue had been used for years by Grace Optical, having spent over two decades in extensive marketing efforts, including advertising in major media outlets in Taiwan. As a result, it had sold a significant amount of glasses. The relevant consumers all knew that Grace Optical used the trademark BOY LONDON for its goods and services. Therefore, the name of the mark was not related to the function, use or quality of the goods, nor was it a common term known to the general public. Since the trademark at issue did not directly and explicitly describe its composition or place of origin as originating from the United Kingdom or London, the public would not be misled into thinking that the goods or services for which the mark was registered originated from the United Kingdom. Therefore, the Court rendered its judgment in favour of Grace Optical.Supreme Administrative CourtThe TIPO filed an appeal with the Supreme Administrative Court, which rendered its judgment on 18 August 2022.(5)The Supreme Administrative Court concluded that no errors had been made in the TIPO's original decision to refuse registration of the trademark BOY LONDON. It reasoned that:the term "London" in the trademark at issue referred to the capital of the United Kingdom, commonly known to Taiwanese people;this word strongly indicates a connection between the trademark at issue and the city;consumers were more likely to be drawn to the word "London" in the trademark at issue; andit was possible for both men and women, regardless of their age, to receive the services offered under the mark, considering the classes designated for use by the trademark at issue.Thus, the word "boy" – as a common term without special meaning – was more likely to be ignored. In other words, consumers would be misled into believing that the goods or services for which the trademark at issue was registered originated from or were related to London. From an objective viewpoint, the trademark BOY LONDON was likely to mislead consumers as to the quality, nature, or place of origin of the goods or services for which the trademark at issue was registered.Further, although it did not need to be considered whether the trademark lacked inherent distinctiveness given that it had become a sign of origin for its registered goods or services through use thereof in the course of trade by the applicant, this did not rule out the application of article 30-1(8) of the Trademark Act – namely, an assessment as to whether the trademark would likely cause the public to be misled as to the quality, nature or place of origin of the goods or services. The Intellectual Property Court had excluded the application of this provision on the grounds that the applicant had evidence of use to establish that the trademark at issue had become, in the course of trade, a sign of origin for its registered goods or services and for distinguishing such goods or services from those of others. The Supreme Administrative Court found this exclusion to be erroneous, reversed the judgment and instead ruled against Grace Optical.CommentArticle 30-1(8) of the Trademark Act did not apply to the applications to register the trademark BOY LONDON filed by the third party Anglofranchise Limited for:"clothing; t-shirts; boots; shoes; hats" in class 25;"travelling trunks; purses; school satchels; handbags; leather bags" in class 18; and"advertising; advisory services for business management and organization; import-export agency services; sales promotion for others" in class 35.This is because the applicant was a UK company. Accordingly, the TIPO granted such applications.The case discussed in this article indicates that a trademark may not be registered where it contains a geographic name that does not reflect the origin of the applicant or correspond to the name of its designated goods or services. This would lead to consumers forming wrong associations between the trademark and its designated goods or services, thereby causing a likelihood of consumers being misled as to the quality, nature or place of origin of the goods for which the trademark is registered.For further information on this topic please contact Selina S Y Lin or Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.Endnotes(1) Application No. 107011874.(2) Judgment 99-Pan-Zi-1324.(3) Judgment 99-Xing-Shang-Su-Zi-123.(4) 108-Xing-Shang-Su-Zi-31.(5) 108-Shang-Zi-1074.