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Geographical Names That Are Unrelated to Designated Goods or Services May Have Inherent Distinctiveness



Paragraph 1, Article 29 of the Trademark Act stipulates that a trademark that consists solely of a description of the place of origin of the goods or service specified is deemed devoid of inherent distinctiveness and shall not be registered. The primary function of a trademark is to identify the source of goods or services, and a geographical name refers to the name of a geographical area on earth, including man-made geographical divisions such as countries, provinces, counties, cities, and streets, and natural landforms such as oceans, rivers, lakes, mountains, and deserts. When geographical names are used in goods and services, the impression given to customers is usually limited to the connection between the geographical area and the goods and services. These names are used to indicate where a product is manufactured, produced, and designed; the place of origin of the business; or where services are provided, but they are not indicators for distinguishing their source.The purpose of the aforementioned article is to prevent a situation where a geographical name is unable to indicate and distinguish the source of a designated good or service and is devoid of inherent distinctiveness, especially when geographical names are famous for producing specific goods or providing specific services.
 
However, there is debate on whether a geographical name is considered arbitrarily used and inherently distinct if there is not an association between the geographical name and the designated goods or services and the consumer does not believe there is a relationship between the place name, location, and the goods or services. The Supreme Administrative Court stated in its decision of No. 2019-Pan-566 on December 12, 2019 involving the trademark “SAN FRANCISCO.” A dictionary lookup of the trademark showed that “San Francisco” is a place name in English. However, “San Francisco” and the applicant’s merchandise he was applying for, “moveable type, printing moveable type, or a mold for printing moveable type,” did not seem to have any connection. Moreover, consumers would not think of San Francisco as the place of manufacture or the place where the product’s services were provided, and therefore, the trademark possessed inherent distinctiveness. The Supreme Administrative Court further stated that the question of whether there was an association between a geographical name and a designated good or service shall be determined based on consumer impression toward each kind of product. Mere association between a geographical name and a certain kind of product shall not lead to the sudden conclusion that the geographical name of other kinds of products also have an association and are devoid of inherent distinctiveness. Furthermore, even if a trademark is registered abroad, the question of whether the geographical name produces an association with the product and can be registered in Taiwan shall still be based on the perception of Taiwanese consumers as trademark is subject to the principle of territoriality.
 
If a geographical name is not inherently distinctive but relevant consumers come to perceive it as a trademark of an applicant’s product after it is used in the market that indicates and distinguishes said product’s source, then the geographical name may have acquired distinctiveness and may receive registration approval. To prove that the geographical name has acquired distinctiveness, the applicant shall provide the relevant evidence and information, such as the relationship between the geographical name and the designated goods or services using it, the usage of the name by competitors, its usage by the applicant and the actual trade situation. The comprehensive examination and judgments regarding the relevant facts of each case’s actual trading market are to be carefully conducted and made by the trademark authority. How an applicant in each case persuades a trademark examiner that there is no association between a geographical name and a designated good or service or that their product has acquired distinctiveness is still a worthy topic of discussion.
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