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A Chinese Translated Trademark that is Identical with or Similar to a Geographical Indication for Wines or Spirits is Unregistrable
The flavor of a wine or spirit is closely related to the nature condition or the history background of its geographical origin. Accordingly, geographical origin is often the key of the consumers' decision making when buying a wine or spirit. To protect such geographical origins, Article 30-9 of the Trademark Act in Taiwan bars applicants from registering a trademark that is identical with or similar to a geographical indication for wines or spirits in Taiwan or a foreign country.
Since Chinese (Mandarin) is the national language in Taiwan, many liquor importers will often select Chinese translated names for geographical origins of wines or spirits for marketing purpose. In a recent administrative case regarding a trademark invalidation case, the Intellectual Property Court held that, Article 30-9 of the Trademark Act is also applicable for such Chinese translated names.
The trademark applicant in this case is a local liquor importer in Taiwan. The liquor importer applied and obtained registrations of the Chinese character trademarks "托凱" (TUO KAI, transliteration for "Tokaj") and "皇家托凱" (HUANG JIA TUO KAI, translation and transliteration for "Royal Tokaj"). Claiming that the two trademarks are similar to the geographical indication "Tokaj", the petitioner in this case filed an invalidation action against the two trademarks based on the above mentioned Article 30-9.
The trademark applicant stated that it choose the name "托凱" and "皇家托凱" based on the well-known Hungary winery Royal Tokaji Borászati Zrt and spent a long time researching and creating the names. The trademark applicant said that it intentionally avoided the existing Chinese translations or transliterations for "Tokaj". It further argued that the official Chinese transliteration for "Tokaj" should be "托卡伊" (TOU KA YI), which it claimed is not similar to the two trademarks at issue.
With regards to this issue, the Intellectual Property Court firstly clarified that, Article 23 of the TRIPS agreement does not require the misleading element for the provision to be invoked. According to the provision, the use of translated geographical indication names and even expressions such as "style" or "type" after the geographical indication should be prohibited.
The Intellectual Property Court further explained that, there were multiple Chinese transliterations existed before the filing date of the two trademarks at issue. "托卡伊" (TOU KA YI) was only one of the transliterations and the consumers do not necessarily associate "Tokaj" solely with "托卡伊" (TOU KA YI) in Chinese. Since "托凱" (TUO KAI) is phonetically similar to the geographic indication "Tokaj", the two trademarks at issue "托凱" and "皇家托凱" should be invalidated.