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The Use of Geographic Name As Trademark May Pass Off to Another's Brand
The Intervenor previously filed an invalidation action against TM "約克夏茶York shiretea and Device" Reg. No. 158031 in respect of services in Class 42 ("trademark at issue") for violation of Articles 30-1(8) and 30-1(11) of the Trademark Act. After examination, the Defendant, i.e. the Intellectual Property Office, rendered a decision that cancelled the registration of the trademark at issue. Dissatisfied therewith, the Plaintiff filed an administrative appeal with the Ministry of Economic Affairs, which was dismissed. It then filed an administrative suit with the Intellectual Property Court ("IP Court"). The IP Court rendered Judgment No. 108-Xing-Shang-Su-Zi-109 to the following effect:
I. The trademark at issue features the foreign words "York shire" and the Chinese characters "約克夏" as the main distinctive portions and is recognized as a combination of the foreign words "York shire" with "tea" and the Chinese characters "約克夏" with "茶" and also gives the impression that the Chinese term is a translation of the English term, and vice versa.
II. As noted, the foreign word "Yorkshire" of the trademark at issue is the geographic name of a place where is widely famous for its rich cultural heritage and natural landscapes. It can thus be ascertained that upon the registration of the trademark at issue on 1 February 2002, domestic consumers should be aware that "Yorkshire"/約克郡 is a renowned historical place name in the UK.
III. The Plaintiff and its predecessor are both legal persons in Taiwan. Also, the Plaintiff has not provided any fact or evidence establishing that the service designated for the trademark at issue actually come from or relate to Yorkshire, United Kingdom. Apparently, the trademark at issue and the designated services therefor are not related at all, and the use of which is likely to confuse people about the origin of goods.
IV. According to the evidential materials provided by the Intervenor, the Plaintiff ever sold its products "YORKSHIRE TEA" (約克夏茶) on major online shops. As a result, it can be concluded that the Plaintiff's use of the trademark at issue has taken advantage of the reputation of the brand and the geographic name associated with the Intervenor, thus enabling the public to mistakenly believe that the products bearing the trademark at issue, which, in fact, originate from Taiwan, are produced in "YORKSHIRE" (the county of York).
The judge in this case held that the trademark at issue should be subject to Article 30-1(8) of the Trademark Act and dismissed the Plaintiff's suit. Subsequently, the Plaintiff initiated an appeal against the judgment made by the IP Court. After examination, the Supreme Administrative Court rendered Ruling No. 109-Cai-Zi-1384, deciding that the appeal is illegal and should be dismissed.