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In Invalidation Proceedings, Whether a Trademark is Distinctive Should be Determined Based on the Time of the Registration of the Trademark
According to the definition incorporated in Article 18 of the Trademark Act, a trademark shall refer to any sign with distinctiveness, which may be used to indicate the source of goods or services or to identify and distinguish goods or services from those provided by others. If a trademark is descriptive or generic of the designated goods or services, the trademark cannot be registered.
In the interest of free competition, descriptive marks or generic marks are more likely to be used routinely by third party competitors therefore exclusivity of such marks should not be granted. In this regard, if an applicant wishes to register a descriptive trademark, it is required to prove that the mark has acquired distinctiveness as a result of its use in the marketplace. In addition, as a balance, a competitor may file an opposition or an invalidation action to cancel a non-distinctive trademark under the trademark legal system in Taiwan. However, when determining the distinctiveness of trademarks in opposition or invalidation proceedings, a common question is – when is the point in time for which distinctiveness has to be established? The Intellectual Property Court in Taiwan tackled this issue and made an important view in its recent administrative decision regarding a trademark invalidation case.
In this case, the Registrant's trademark was filed on 30 June 2017 and was published on 1 March 2018. A third party filed invalidation action against the trademark, stating that it should be cancelled because it is descriptive. The Intellectual Property Office made a favorable decision to the third party and subsequently cancelled the trademark. Thus, the Registrant appealed to the Intellectual Property Court.
The Registrant claimed that it created the trademark and had been using it since 22 May 2017, before the filing date of the trademark. The Registrant further argued that before the filing date, no other competitors used the same trademark on the same goods.
However, the Intellectual Property Court explained that, according to the prevailing Trademark Act, in invalidation proceedings, whether the registration of a trademark is against the Act should be determined based on the time of the registration of the trademark. In this regard, whether the trademark at issue was distinctive should be based on the registration date of the trademark, 1 March 2018.
The Intellectual Property Court further pointed out that, before the registration date of the trademark at issue, there were other companies discussing and using the term on the same goods. In addition, the evidence provided by the Registrant was not enough to prove that the trademark had acquired distinctiveness through use on the marketplace. Given this, the Intellectual Property Court held that the trademark should be cancelled due to non-distinctiveness.