| Trademark |
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| I. Does the geographical name (Boy London) included in the trademark image mislead the public to judge the place of origin of its goods/services? |
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| 1. |
Case information: |
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Judgment Court: Supreme Administrative Court
Case number: Administrative Judgment Shangzi No. 1074 in 2019
Judgment date: August 18, 2022 |
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| 2. |
Summary: |
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(1) |
In this case, a trademark application for "Boy London" was filed designating the goods and services for glasses, retail and wholesale for glasses. The point of contention is whether "Boy London" has the risk of causing the public to mistakenly believe the origin of its goods/services. After the case was rejected by the TIPO, the applicant took the actions of administrative reliefs. The Intellectual Property and Commercial Court and its superior authority, the Supreme Administrative Court, held the different opinions and decisions in this case. Finally, the Supreme Administrative Court agreed with the TIPO’s opinion that "Boy London" would cause the public to mistakenly believe the origin of its goods/services. |
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(2) |
Generally, when a trademark contains a geographical name in addition to the distinctive part, the geographical name may be deemed indistinctive to be a part of a trademark owing to the indication of the place of origin (§29-1). If so, it is possible to obtain the registration either by the disclaimer of the exclusive use of the geographical name, or by providing a large amount of evidence of use to claim the secondary meaning of the mark.
However, if the applicant has nothing to do with the geographical name. For example, in this case, the trademark contains "London" was filed by a Taiwan company. It will mislead the public about the place of origin (§30-1-8). Thus, it is not allowed to obtain the registration through the ways mentioned above. |
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(3) |
The Intellectual Property and Commercial Court deemed that "Boy London" would not cause the public to misidentify the place of origin, but its decision was overturned by its superior authority, Supreme Administrative Court. It appears that the determination of the distinctiveness of a trademark containing a geographical name still needs to be discussed case by case. |
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(4) |
We herewith list the main points of the different opinions of the two Courts: |
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| Intellectual Property and Commercial Court |
Supreme Administrative Court |
There is no risk of misleading the public about the origin of its goods/services:
The trademark at issue is composed of two words "Boy London", not a single word "London". "Boy London" has nothing to do with the function, use and quality of the products, nor is it a common term known to the general public. So, it should not be misunderstood that the trademark at issue is equivalent to or implies the place name of the capital of the United Kingdom. |
There is a risk of misleading the public about the place of origin of its goods/services:
Because London is a world-famous metropolis, the capital of the United Kingdom and the center of politics, culture, art, and fashion, it is a city name widely known to people in Taiwan. The word "London" can strongly point to the connection between the trademark at issue and the city of London. |
The relevant consumers are familiar with the "Boy London" trademark, so they will not mistakenly believe that the trademark has any connection with the United Kingdom or London, nor imply that the place of origin or the source of the goods/services are from London.
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Although a trademark may become a distinctive mark through the long-term and extensive use in the market and can exclude the situation of lacking congenital distinctiveness (Article 29.2 of the Trademark Act), it cannot be ruled out that the trademark would cause the public to the risk of misidentifying and misbelieving the nature, quality or origin of the goods/services. The original judgment adopting Article 30.1(8) was made by mistake (a confusion between §30.1(8) and §29.2). |
| The applicant registered the trademark for "BOY LONDON & Romeo in Chinese" in 1991, but the new application for the trademark "BOY LONDON" was rejected, which violated the principle of equality and the principle of prohibiting differential treatment. |
Although the trademark "BOY LONDON & Romeo in Chinese" was approved for registration in 1991, it has been more than 20 years since then. It should be discussed case by case according to the distinctiveness of the trademarks, the social environment, the recognition of the consumers, the actual use in the same market, and the characteristics of designated goods/services etc. when the trademark at issue was filed. Different cases should be judged independently, which does not violate the principle of equality. |
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