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Slogans Containing Well-Known Marks Do Not Necessarily Have Inherent Distinctiveness or Acquired Distinctiveness

Ruey-Sen Tsai/Celia Tao


According to the Examination Guidelines on Distinctiveness of Trademarks issued by the Intellectual Property Office, consumers will not usually perceive a slogan as an identifier of goods or services until consistent advertising practices or other effort on the part of the brand user. Therefore, slogans generally are not inherently distinctive in the current trademark examining practice in Taiwan. An applicant of a slogan will need to prove that the slogan has acquired secondary meaning for it to be registrable.

 

At the same time, the Guideline also states that, a slogan that is highly creative or containing highly distinctive trademark may be considered as inherently distinctive as an exception. However, if the slogan as a whole is still a mere description of goods or services, it will not be deemed as distinctive. In this case, whether a slogan containing a well-known mark will be considered as distinctive as a trademark is a question left to be answered.

 

In a recent administrative litigation case regarding the registrability of a slogan in 2018, the Intellectual Property Court of Taiwan stated that slogans containing well-known marks do not necessarily have inherent distinctiveness or acquired distinctiveness.

 

In the case above, for the issue of inherent distinctiveness, the trademark applicant claimed that its house mark is extremely well-known worldwide; the IPO should not disregard the existence of its famous house mark and treat the trademark to be filed as a regular slogan. The Intellectual Property Court, however, stated that the assessment of inherent distinctiveness should be determined on the overall look and feel of the trademark. In this case, the trademark to be filed is just a slogan, which is a mere description of the maker or the designer of the goods, the relevant consumers cannot treat it as an identifier of the goods.

 

As for the issue of acquired distinctiveness, the trademark applicant claimed that it started to use such a slogan as a trademark as early as in February 2005, and the consumers are already familiar with such a slogan as a trademark.  The trademark applicant also pointed out that the slogan has acquired trademark registrations in multiple countries worldwide. The Intellectual Property Court, on the other hand, stated that acquired distinctiveness should be determined by whether the consumers in Taiwan have perceived the slogan as an identifier of the goods. In the case, however, the evidence showed that the consumers still need to use the trademark applicant's other main trademarks in combination with the slogan to distinguish the source of goods. Therefore, the main marks are the actual identifiers in this case, not the slogan. If the main trademarks are removed from the slogan, the relevant consumers will not be able to identify the source of goods from the rest of the slogan.
 



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