The Risk of Descriptive Use and Genericization – An Analysis of the Intellectual Property Court Case
2024/11/28 >BackThe Risk of Descriptive Use and Genericization – An Analysis of the Intellectual Property Court Case No. 123, 2020
| 1. Introduction | |
| According to Article 29, Paragraph 1, Subparagraph 1 of the Trademark Act, A trademark shall not be registered if it is devoid of distinctiveness in “consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services." Trademarks in the form of words or images that are generally understood as descriptive of or closely related to the goods in question are subject to this provision, making them ineligible for registration (see Supreme Administrative Court Judgment No. 1846, 2001). When applying for trademark registration, most applicants avoid using descriptive terms commonly adopted in their industry. This article, however, examines a different scenario: a trademark that was not initially a descriptive term becomes one due to the trademark owner's own use to describe their product’s characteristics, ultimately leading to its cancellation. The case analyzed here is based on Intellectual Property Court Administrative Judgment No. 123, 2020. |
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| 2. Case Analysis | |
| (1). | Background of the Case |
| The trademark at issue in the case was the registered word trademark "Hatfield", Registration No. 1942623, designated for goods such as fig saplings. The Intellectual Property Office (IPO) determined that "Hatfield" was recognized by relevant consumers as a variety name for figs, and thus revoked the registration of the trademark. The key issue was whether, at the time of registration (October 1, 2018), consumers in Taiwan already recognized "Hatfield" as a descriptive term for a variety of fig saplings. | |
| (2). | Court Findings |
| The court concluded that " Hatfield " constituted a descriptive term for a fig variety. Evidence included statements made by the plaintiff in fig cultivation forums between February and August 2018, such as: "In February this year, I introduced this variety, Hatfield, cultivated by Mr. Robert Hatfield on his farm in California, USA." "Introduction to the characteristics of the Hatfield fig: the only variety in the world with a smooth skin that is resistant to splitting." Additionally, a March 20, 2018, Facebook post by "Bao-xin Figs" mentioned, "Currently, not all varieties of saplings or cuttings are in stock. Varieties include Celeste, Yellow Long Neck, Morocco Black, and Hatfield." |
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| (3). | Lessons from the Case |
| In this case, much of the evidence relied upon by the court to establish " Hatfield " as a descriptive term came from the plaintiff's own statements, as admission of facts. The plaintiff introduced the fig variety to Taiwan and was the first to refer to it as " Hatfield." Subsequently, others in the industry adopted the term. The plaintiff’s use of " Hatfield " as a descriptive term ultimately led to the revocation of the trademark. This serves as a cautionary tale for all trademark owners. | |
| 3. Conclusion: The Risk of Trademark Genericization | |
| Under Article 18, Paragraph 2 of the Trademark Act, a trademark's function is to "enable consumers to recognize the source of the goods or services." If a trademark is used for other purposes, such as describing product characteristics or serving as a generic term for the product, it risks being revoked. If a trademark is used as a descriptive term or generic name before registration, it lacks distinctiveness under Article 29, Paragraph 1, Subparagraph 1 of the Trademark Act and should not be registered. If the distinctiveness issue arises after registration, the trademark may be invalidated under Article 63, Paragraph 1, Subparagraph 4, which addresses the phenomenon of "trademark genericization." The case of the "Hatfield" trademark underscores the critical importance of maintaining the distinctiveness of a trademark throughout its lifecycle. While trademarks serve to identify the source of goods or services, using them descriptively or allowing them to become generic can jeopardize their legal protection. As demonstrated in this case, a trademark owner’s own actions—such as using the mark descriptively or failing to monitor its usage by others—can lead to its revocation. To mitigate these risks, trademark owners must ensure their trademarks are used strictly in ways that reinforce their role as identifiers of origin. Additionally, proactive measures, such as including appropriate trademark symbols (e.g., ®) and promptly addressing unauthorized generic use by others, are essential to avoid genericization. This case serves as a valuable lesson on the delicate balance between effective marketing and preserving trademark rights, emphasizing the need for vigilance and strategic trademark management. |
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