IPO initial decision
Applicant's defence
IPO final decision


IPO initial decision

The Intellectual Property Office (IPO) provisionally refused an application(1) to register the trademark Y42 in classes 35 and 42. Its reason was that Y42 was more similar to:

  • a product model;
  • a model pattern; or
  • a specification of the designated services.

Therefore, the IPO held that:

  • the relevant consumers would not recognise Y42 as a sign to identify the source of the goods or services; and
  • Y42 lacked sufficient distinctiveness to be registered as a trademark.

Consequently, the IPO provisionally decided that Y42 was not registrable according to articles 18-2 and 29-1(1) and (3) of the Taiwan Trademark Act.

Applicant's defence

The applicant filed a defence on the following grounds.

Trademark distinctiveness
According to the Examination Guidelines on Distinctiveness of Trademarks published on 1 July 2012, the distinctiveness of a trademark is associated with how the trademark:

  • denotes the source of goods or services; and
  • distinguishes such goods or services from those of others.

Namely, the determination of whether a trademark is distinctive must be made based on the relationship between the trademark and the designated goods or services, rather than on the trademark alone. Moreover, whether a trademark is distinctive should be determined on the basis of:

  • the facts and evidence of each case;
  • competitors' use of trademarks in the same trade;
  • the applicant's method of using the trademark; and
  • the actual trading situations.

Use of English letters and numbers
A trademark composed of English letters and numbers should be approved for registration if it is not the specification, model name or related description of the designated goods or services. The well-known cosmetics brand SKΠ is an example. Cosmetics brands do not usually use model or type specifications to describe their products' characteristics. Therefore, SKΠ has inherent distinctiveness.

Y42 did not signify the quality, characteristics or other descriptions of:

  • the designated services:
    • "data processing" in class 35; and
    • "computer programming; computer data processing and provision of research and development" in class 42; or
  • services similar to the designated services.

Y42 was not descriptive of the designated services, and the relevant consumers would be able to recognise it as a sign to identify the source of the services. Therefore, it inherently qualified to be registered as a trademark.

Generic name
Y42 was not a generic name or a relevant description of the designated services commonly used by businesses to denote the service in the same trade. The applicant used Y42 in the manner of a colour trademark or logo (Figure 1), which would give the consumers the impression that Y42 was a sign to identify the source of the goods or services.

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Figure 1: use of Y42 as colour trademark or logo

Acquired distinctiveness
In addition to the inherent registrability of Y42, the trademark Y42 had also acquired distinctiveness and secondary meaning through the applicant's long-term and extensive use of it globally, including in Taiwan. Article 29-2 of the Trademark Act provides that if a trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant, it is registrable as a trademark.

IPO final decision

After having considered the above arguments, the IPO agreed that the mark Y42 did not violate articles 18-2 and 29-1(1) and (3) of the Taiwan Trademark Act and granted the registration thereto.

For further information on this topic please contact Cathy Ting or Sophia Chen at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.

Endnotes

(1) Application No. 110063686.