The applicant filed a trademark application for GUMGUM and device designated to use on services of cafeterias, bars and restaurants. The trademark device depicts a man with a tobacco pipe dangling from his mouth, and his hands in his pockets while peeing casually (hereinafter the “GUMGUM man”). Because of the GUMGUM man’s casual peeing gesture, the Taiwan Intellectual Property Office (TIPO) issued a preliminary rejection on the ground of Article 30-I-7 of the Trademark Act which stipulates that a trademark shall not be registered if it is contrary to public policy or to accepted principles of morality.
The examiners indicated that the GUMGUM man may give consumers an impression of a middle-aged man peeing in public, or at least would very likely cause many to associate the GUMGUM man to uncivilized behavior. The examiners further elaborated that the law, namely, Article 30-I-7 of the Trademark Act, is meant to maintain public order and good morality. With regard to public order, this refers to the general interest of the nation and to society, whereas good morality refers to a general moral concept accepted by society. The provision may be applied to a trademark if it, either in form or in its meaning, is contrary to the nation’s interest or a socially accepted moral concept. However, according to the examiners, the application of law would still take into consideration the social atmosphere at the time when attempts to register the trademark are occurring, and the law is not limited only to regulating a trademark itself. If a trademark itself does not contain any bias, vulgarity, discrimination, or unpleasant wordings or devices, but the use of the trademark may lead to the same phenomenon as soon as the trademark is associated with the designated goods or services, the trademark would still be governed by the aforesaid provision.
The examiners in their preliminary rejection gave seven types of situations that are generally identified as being against public order or good morality. They include situations in which trademarks (1) are damaging the national dignity, (2) instigate a crime or disturb the social order, (3) are related to a mark of an illegal or armed rebellion organization, (4) cause a terrifying or repulsive feeling that may disturb mental health, (5) are disrespectful to a country, an ethnic group, a religion, a profession or an individual, (6) are contrary to moral principles, and (7) promote superstition.
In rebuttal, our trademark attorney emphasized that the application of Article 30-1-7 should be determined by the integrated factors of social atmosphere at the time of the registration, the marketplace of the designated goods and services, and the recognition of the relevant public. The trademark device at issue -- the GUMGUM man -- was drawn with American-style illustration techniques in mind, the design of which is humorous and entertaining. The applicant company was established by a group of young backpackers who love traveling, food and drinks. Deriving inspiration from their enjoyable experiences during their trips, it is the founders’ common idea to build a relaxing space where people can interact and share ideas. The device of the GUMGUM man symbolizes a free spirit without care or worries, as shown by a tobacco pipe dangling from the man’s mouth while peeing. It was hoped that consumers would find their most relaxing moment at the applicant’s restaurant. The applicant tried to convey such ideas by utilizing unconventional humor and believed that such a funny trademark device would interest and impress consumers.
The applicant also submitted a record of significant gross revenue, as well as various media reports and great food reviews to demonstrate its successful operation under the trademark GUMGUM and the device. In addition to no negative comments regarding the GUMGUM man device, most reviewers on the internet said the device is mischievous, funny and humorous. All the evidential materials prove that the spirit of the brand coined by the applicant has been well accepted by consumers.
At the end, TIPO allowed the registration of GUMGUM and the device on the restaurant related services, bringing a happy ending to the GUMGUM man.