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2022 Taiwan Supreme Administrative Court Judgment: Trademark "Boy London" unregistrable as it likely misleads the public as to the place of origin of its registered goods or services
Grace Optical Co., Ltd. ("Grace Optical," a Taiwan company) filed for registration of the trademark at issue "Boy London" (Appl. No. 107011874) for "optical glass; eyeglass frames; sunglasses" in Class 9, "retailing and wholesaling of eyeglasses" in Class 35, "clock and watch repair, eyeglass repair" in Class 37, and "optometrists' services, opticians' services" in Class 44 with the Taiwan Intellectual Property Office ("TIPO") under the Ministry of Economic Affairs. Finding the mark to be likely to mislead the public as to the place of origin of the goods or services for which the mark is registered, TIPO refused registration of the mark by citing Article 30-1(8) of the Trademark Act.
In TIPO's view, Grace Optical did point out that the trademark at issue "Boy London" means "a boy from London" and the geographic sense (the City of London) has been removed from its overall meaning, that the mark is not likely to mislead the average consumer as to the quality, nature or place of origin of the goods for which the mark is registered, and that the mark should be deemed distinctive. However, according to Intellectual Property Court Judgment 99-Xing-Shang-Su-Zi-123, under circumstances where a trademark has become a sign of origin for its registered goods or services through use thereof in the course of trade by the applicant, the situation in which the trademark lacks inherent distinctiveness may be excluded from consideration, yet it does not rule out the application of Article 30-1(8) of the Trademark Act, i.e. the trademark likely causes the public to be misled as to the quality, nature, or place of origin of such goods or services.
Furthermore, with respect to the determination of whether one is likely to be misled as to quality, nature, or place of origin, Supreme Administrative Court Judgment 99-Pan-Zi-1324 states that, for Article 30-1(8) of the Trademark Act to apply, one shall observe the overall appearance, concept or pronunciation of the device or wording in the trademark representation in question, consider the impression conveyed to consumers by the mark, evaluate the connection between the trademark and its designated goods or services, and look at actual instances of trading of such goods or services in the marketplace in order to form a direct and objective judgment—on the basis of the knowledge and perception of consumers of such goods or services—with regard to the trademark itself about whether the place of origin or sale of the goods or the place where the services are provided as perceived by consumers differs from the nature, quality or place of origin thereof in actual use as perceived by consumers, such that consumers are likely to be misled.
Dissatisfied with the disapproval decision, Grace Optical appealed the case to the Ministry of Economic Affairs, but was dismissed. Then, Grace Optical filed an administrative suit with the Intellectual Property Court (now called the Intellectual Property Court and Commercial Court), which rendered its judgment 108-Xing-Shang-Su-Zi-31 on 19 September 2019. The Intellectual Property Court determined that the trademark at issue "Boy London" consists of two words (Boy London) rather than one word (London), and that an average person learning about a trademark in an alphabetic language tends to give more weight to the initial word. Thus, the visually striking part of trademark "Boy London" is the word "Boy," not "London," and it is the trademark at issue in its entirety—not the mark divided into "London" and "Boy"—that the relevant consumers recognize. As considered from a direct and objective perspective, the trademark at issue will not cause the relevant consumers to wrongly see "Boy from London" or "London" as identical or similar to "Boy London."
The trademark at issue has been used for years by Grace Optical, having spent over two decades in extensive marketing efforts, including advertising in major media outlets in Taiwan. As a result, it has sold a tremendous amount of eyeglasses. The relevant consumers all know that Grace Optical uses trademark "Boy London" for its goods and services. Therefore, the name of the mark is not related to the function, use or quality of the goods, nor is it a common term known to the general public. Since the trademark at issue does not directly and explicitly describe its composition or place of origin as originating from the UK or London, the public will not be misled into thinking that the goods or services for which the mark is registered originate from the UK. Hence, the Court rendered a judgment in favor of Grace Optical.
Subsequently, TIPO filed an appeal with the Supreme Administrative Court, which rendered its judgment 108-Shang-Zi-1074 on 18 August 2022. An excerpt is as follows:
The Supreme Administrative Court concluded that no errors had been made in TIPO's original decision to refuse registration of the trademark at issue "Boy London." It reasoned that "London" in the trademark at issue refers to the UK's capital commonly known to Taiwanese; that this word strongly indicates a connection between the trademark at issue and the city; that consumers are more likely to be drawn to the word "London" in the trademark at issue; and that it is possible for both men and women, no matter their age, to receive the services offered under the mark, considering the classes designated for use by the trademark at issue. Thus, the word "Boy" as a common term without special meaning is more likely to be ignored. In other words, consumers will be misled into believing that the goods or services for which the trademark at issue is registered originate from or are related to London. From an objective viewpoint, "Boy London" used as a trademark is likely to mislead consumers as to the quality, nature, or place of origin of the goods or services for which the trademark at issue is registered.
Furthermore, under circumstances where a trademark has become a sign of origin for its registered goods or services through use thereof in the course of trade by the applicant, the situation in which the trademark lacks inherent distinctiveness may be excluded from consideration, yet it does not rule out the application of Article 30-1(8) of the Trademark Act, i.e. the trademark likely causes the public to be misled as to the quality, nature, or place of origin of such goods or services. In the determination of the requirement for the foregoing provision in the Trademark Act, the judgment rendered by the Intellectual Property Court excluded the provision's application, on the grounds that the applicant may submit evidence of use to establish that the trademark at issue has become, in the course of trade, a sign of origin for its registered goods or services and for distinguishing such goods or services from those of others. Given the aforesaid reasons, the Supreme Administrative Court found such exclusion to be erroneous. Accordingly, it reversed the judgment and instead ruled against Grace Optical.
For comparison purposes, one should note that the quoted article does not apply to the applications to register the trademark "BOY LONDON" for "clothing; t-shirts; boots; shoes; hats" in Class 25, "travelling trunks; purses; school satchels; handbags; leather bags" in Class 18 and "advertising; advisory services for business management and organization; import-export agency services; sales promotion for others" in Class 35 as well as several other trademark applications filed by the third party Anglofranchise Limited, because the applicant is a UK company. Accordingly, such applications have been granted registration by TIPO.
Given the above, where the string of words in a trademark contains a geographic name that does not reflect the origin of the applicant, and the mark does not correspond to the name of its designated goods or services, leading to consumers having wrong associations between the trademark and its designated goods or services and thereby causing a likelihood of consumers being misled as to the quality, nature, or place of origin of the goods for which the trademark is registered, such trademark may not be registered.