眾律國際法律事務所

Taiwan Trademark 101 Series,   Distinctiveness

Written by: James Y. Chang

Attorney-at-Law

1. Trademarks Distinctiveness

The main function of a trademark is to identify the source of goods or services. If a sign cannot identify and distinguish goods or services, it does not have the trademark function and the registration cannot be approved. Distinctiveness is an important requirement for registration of a trademark [1] . The details of distinctiveness are as follows:

2.   Fanciful Marks

Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark [2] . Approved cases [3] :

     "GOOGLE" for search engine services

     " 震旦 " ("Aurora") for transmission services by telecommunications weighted networks

     " 普騰 " ("Proton") for television sets and stereo sets

       for cars and passenger cars.

3.   Arbitrary Mark

An arbitrary mark is a trademark that consists of a word which is used in a way that has nothing to do with its meaning. The use of the word will have nothing to do with its actual meaning. Arbitrary marks are inherently distinctive and the owner need not show secondary meaning to be entitled to protection for the mark because arbitrary marks bare no connection to the underlying goods and services [4] . Approved cases [5] :

 .    " 蘋果 APPLE," " 黑莓 BlackBerry" for computers and data processors.

     " 風信子 " ("Hyacinth") for cups, bowls and dishes.

     " 向日葵 " ("Sunflowers") for solar collectors.

     " 春天 " ("Spring") for restaurant and hotel services 

       for clothing.

4.   Suggestive Trademark

A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought, imagination or perception for the consumer to reach a conclusion as to the exact nature of the goods [6] . Approved cases [7] :

     " 快譯通 " ("Quick Translation Understandable") for electronic dictionaries.

     " 一匙靈 " ("One Spoon Effective") for laundry detergents in powder form.

     " 克潮靈 " ("Resisting Humidity Effective") for dehumidifying agents.

     " 靠得住 " ("Reliable") for sanitary napkins.

     " 足爽 " ("Foot Refreshing") for medicated ointment for H.K. feet.

       for chairs, rocking chairs, desks and chairs.

5. Acquired Distinctiveness

A trademark with no distinctive character is prima facie unregistrable. However, these marks may still allowed to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade marks office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness [8] . Approved cases [9] :

     "787", a simple number, is not distinctive.   However, after the applicant has long used it as a trademark in connection with airplanes and their parts and fittings, aircraft and their parts and fittings, and helicopters and their parts and fittings, such sign has caused a sufficient number of relevant consumers to recognize it as a sign identifying the source of goods and has acquired distinctiveness through use.

     "4810," the height of Mont Blanc, the highest mountain in Europe, is not distinctive. However, after the applicant has long used it as a trademark in connection with fountain pens, ball point pens, pencils, felt pens, etc., and used it extensively in the advertising media, such sign has acquired distinctiveness through use.

     "V50" for cars, trucks and all-purpose RV cars gives an impression that it is the model number of the designated goods and is not inherently distinctive. However, after the applicant has long used it, relevant consumers are able to recognize it as a sign identifying the source of certain goods, so it has acquired distinctiveness.

     "Life should be wasted on beautiful things," which is irrelevant to drinks made from tea leaves or tea, coffee, drinks made from coffee, cocoa and drinks made from cocoa, ice cream, etc., was not distinctive. However, after the applicant has long used it as a trademark in connection with aforesaid goods and used it extensively in the advertising media, such sign has acquired distinctiveness.

       is an ornamental pattern.   The use of the pattern for department stores, supermarkets, etc., is not inherently distinctive. However, after the applicant has long used it as a trademark in connection with handbags, packaging bags, etc., such sign has acquired distinctiveness.