Newsletter
Supreme Administrative Court Reject Acquisition of Trademark Distinctiveness as Exception for Non-Registrability due to Misleading of Goods Origin
Article 29 of the Trademark Act stipulates: A trademark shall not be registered if it is devoid of distinctiveness in any of the following: 1. consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services.... 3. consisting exclusively of other signs which are devoid of any distinctiveness. However, once there are any situations specified above, if the trademark has been used by the applicant and has become an identification of the applicant's goods or services in transactions, the trademark may be still registered. Such a rule is related to the regulations that a trademark cannot be registered if it lacks the distinctiveness of the trademark.
Article 30 of the Trademark Act further stipulates that a trademark shall not be registered if it is likely to mislead the public as to the nature, quality, or place of origin of the goods or services. If a trademark is subject to the indicated situation in Article 30 of the Trademark Act, whether or not the trademark applicant may provide evidence to prove that the trademark applied for registration has become an identification for goods or services in transactions and then argue that this is an exclusion of the applicable provisions of Article 30 of the Trademark Act is an important disputed issue in trademark practice.
The Supreme Administrative Court held on 18 August 2022 in the administrative litigation of the trademark registration application that even if the trademark is used by the applicant and has become an identification of its goods or services in transactions, it cannot definitely rule out the application of such a provision that once the trademark is likely to mislead the public as to the nature, quality, or place of origin of the goods or services, the trademark should not be registered.