Does the English letter(s) combined with number(s) as a trademark possess distinctiveness?
[ September 2023 ] >Back| Trademark | |||
| I. | Does the English letter(s) combined with number(s) as a trademark possess distinctiveness? | ||
| 1. | Case Background | ||
| (1) | A New Zealand company (hereinafter referred to as "A Company") is the world's first producer of lactose-free milk. It specializes in the sale of 100% lactose-free "A2" brand milk and infant formula. | ||
| (2) | On June 1, 2013, A Company filed "A2" trademark application in Taiwan designating the goods “milk, powdered milk, etc”. It was registered under the Trademark No. 01648000. | ||
| (3) | On May 27, 2019, a third company ((hereinafter referred to as "B Company") filed an invalidation against the "A2" trademark (Registration No. 01648000) up to the Taiwan Intellectual Property Office (TIPO), claiming that the trademark lacked distinctiveness. | ||
| (4) | B Company argued that the "A2" trademark is an abbreviation of "A2-β casein", which is a description of the product itself and lacks distinctiveness. B Company is promoting its powdered milk which contains "A2β casein". | ||
| (5) | On October 30, 2019, B Company also filed a revocation application against the "A2" trademark and lodged an opposition against A Company's registration of Trademark No. 01991255 for "a2 MILK". B Company is actively pursuing the actions to invalidate A Company's exclusive rights to all "A2" related trademarks. | ||
| 2. | The invalidation, spanning three years, has seen different opinions from various levels of authorities regarding the distinctiveness of the "A2" trademark: | ||
| (1) | On March 31, 2022, the TIPO issued a decision, concluding that the "A2" trademark is descriptive of the goods and lacks inherent distinctiveness. Based on the evidence presented by A Company, it also could not be considered to have acquired distinctiveness over time. As a result, the registration was revoked. | ||
| (2) | On July 20, 2023, the Intellectual Property and Commercial Court issued a Judgment determining that "A2" is a suggestive trademark with inherent distinctiveness, overturning the IPO's opinion. | ||
| (The Court also ruled in a separate case that the "a2 MILK" trademark has distinctiveness.) | |||
| 3. | The summary of the above-mentioned Judgment of the Intellectual Property and Commercial Court (hereinafter referred to as the Court) is as follows: | ||
| (1) | Issue: Judging from the perspective of relevant consumers in Taiwan, whether the disputed "A2" trademark had distinctiveness on June 1, 2014 (the registration date)? | ||
| (2) | "A2" is a suggestive trademark with inherent distinctiveness: "A2" is not an existing term found in dictionaries, and there are no defined or directly corresponding Chinese terms for it. Relevant consumers cannot directly discern the meaning represented by this word mark. At the time of the registration date of the disputed trademark, the consumers in Taiwan were not yet familiar with the composition of regular milk, which can be divided into "A1-β casein" and "A2-β casein." They would need to conduct their own research or use a certain degree of imagination, thinking, or reasoning (i.e., "A2" ⇒ "A2-β casein" ⇒ "Pure A2 type β-casein milk" ⇒ "A2 milk") to understand the relevance of the disputed trademark to the characteristics of the designated goods, such as milk or powdered milk. It implicitly and indirectly indicates the components and properties of the goods and should be considered a "suggestive description," possessing inherent distinctiveness. |
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| 4. | Regarding trademarks consisting of "letters + numbers" and their distinctiveness, there are different opinions at various levels of authorities. How should the applicant respond? | ||
| (1) | Based on the comprehensive view of the Court's judgment, there are three key points in evidence determination: | ||
| A. | Time: Evidence must precede the "registration date" of the disputed trademark to confirm the usage among competitors and consumer awareness at that time. | ||
| B. | Geographic location: The evidence must be related to the use in Taiwan, as evidence in foreign countries may not reflect the awareness of the consumers in Taiwan. | ||
| C. | Data representing consumer perspectives or awareness: Consumers generally do not read "professional journals," so it is recommended to provide easily accessible information for consumers such as online articles, forums, media reports, etc., which can better reflect consumer awareness. | ||
| (2) | In addition to the Court's opinion, the interpretation of the TIPO (Trademark Law Interpretation Workshop held on April 12, 2023) can also be considered: | ||
| Generally, combinations of letters and numbers give consumers the impression of specifications, model numbers, or other descriptions of products or services. For example, "4WD" is used in automobiles to indicate four-wheel drive; "MP3" stands for MPEG-3 audio file compression format and is used for music players; "512MB" is used on memory cards to indicate memory capacity. These are all specifications related to products and serve as descriptions but lack distinctiveness. Furthermore, depending on the "industry," examples were provided: | |||
| A. | Industries such as automobiles, motorcycles, bicycles, machinery, hand tools, mobile phones (e.g., G9 smartphone), wearable electronic devices, cameras, sports equipment (e.g., B-140 golf clubs), and others are accustomed to using "letters + numbers" as model numbers or specifications for products or services. Therefore, using "letters + numbers" as trademarks designated for use on such related products or services generally lacks distinctiveness. | ||
| B. | However, for industries not falling into the above categories, using combinations of letters and numbers as identifiers can have distinctiveness. For example, SK-II for cosmetics or G2000 for clothing. | ||
| The above distinctions are based on general principles and still require a comprehensive assessment of various factors specific to each case. | |||
| 5. | Conclusion: | ||
| Regarding trademarks consisting of "letters + numbers," whether they possess distinctiveness depends firstly on the establishment of the field of goods or services and secondly whether relevant industry players commonly use "letters + numbers" as model numbers or specifications for products or services. If they do, it is "not" advisable to use a "letters + numbers" trademark. If not, an applicant can proceed with the application. If it falls into a gray area, an applicant can consider filing in a way that combines "letters + numbers" with "distinctive graphics or text." If the TIPO deems "letters + numbers" as lacking distinctiveness, the application can then disclaim the exclusive use of the indistinctive part, and secure registration for the entire trademark. After actively using "letters + numbers", for a period of time, the applicant can later file them separately, providing substantial evidence of post-acquired distinctiveness. |
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| II | The Requirements of Filing a Certification Mark in Taiwan | ||
| A certification mark is a sign that serves to certify a particular quality, accuracy, material, mode of manufacture, place of origin or other matters of another person’s goods or services by the proprietor of the certification mark and distinguish the goods or services from those that are not certified. | |||
| 1. | The qualification of the applicant for a certification mark: | ||
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Only a juridical person, a group or a government agency which is competent to certify another person’s or company’s goods or services shall be eligible to apply for the registration of a certification mark.
An applicant referred to in the preceding paragraph who carries on a business of goods or services of the kind certified, shall not file an application for registration of a certification mark. |
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| 2. | Requirements for filing a certification mark application: | ||
| (1) | An original Power of Attorney executed by the applicant. Neither notarization nor legalization is required. It is sufficient to send us the executed Power of Attorney scanned in a color PDF file by e-mail. In this regard, no hard copy is required. | ||
| (2) | Identity document of a juridical person, a group or a government agency. | ||
| (3) | Documents proving the applicant’s capability to certify another person’s goods or services, such as the purpose of establishment, task, business items, scale, history, reputation or duties, etc.. | ||
| (4) | Regulations governing the use of the certification mark with an excerpt of Chinese translation thereof recorded in an electronic file. The regulations governing the use of the certification mark shall specify the following: | ||
| (a) | The characteristics to be certified by the certification mark; | ||
| (b) | The condition on the use of the certification mark; | ||
| (c) | The method of managing and supervising the use of the certification mark; | ||
| (d) | The procedures for applying to use the certification mark and resolving disputes thereof. | ||
| (5) | A declaration stating that the applicant does not carry on a business involving the manufacture and marketing of goods or provision of services of the kind certified. | ||
| (6) | A certified copy of the parent trademark application in case priority is claimed. | ||
| (7) | The electronic file (in .jpg form) of the certification mark. | ||
| (8) | Name and address of the applicant as well as name of the representative thereof. | ||
| (9) |
Chinese characters of the filing particulars of the applicant and the representative, if any.
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| 3. | Use of a certification mark: | ||
| “Use of a certification mark” means the use of such mark by any person who is allowed by the proprietor of such mark in accordance with the conditions prescribed in the regulations governing the use of such mark. | |||
| 4. | Duration of a certification mark: | ||
| 10 years from the date of registration. Renewal of the duration period of the right to exclusive use can be made within 6 months before the expiration of the existing period. There will be a six-month grace period after the expiry date; however, extra fees will be occurred. |
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