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"y42" is Distinctive for Registration as a Trademark
Trademark "y42" Application No. 110063686 (Classes 35 and 42) encountered a provisional refusal from the Intellectual Property Office (IPO) for the reason that the trademark "y42" is more like a product model, model pattern or specification of the designated services which is incapable of making the relevant consumers recognize it as a sign identifying the source of the goods/services and lacks distinctiveness to be registered as a trademark; consequently, "y42" is not registrable according to Articles 18-2 and 29-1(1) & (3) of the Taiwan Trademark Act. After filing defense based on the following grounds, the applicant successfully obtains registration for "y42".
1. According to the Examination Guidelines on Distinctiveness of Trademarks announced on 1 July 2012, the distinctiveness of a trademark is associated to how the trademark denotes the source of goods or services and how the trademark distinguishes such goods or services from those of others. Namely, to determine whether a trademark is distinctive or not must be made based on the relationship between the trademark and the designated goods or services, rather than on the trademark alone. Moreover, whether a trademark is distinctive should be determined on the basis of the facts and evidence of each case, the use of the competitors in the same trade, the applicant's method of use and the actual trading situations should also be considered.
2. A trademark composed of English letters and numbers should be approved for registration if it is not the specification, model name or related description of the designated goods/services. Take the well-known cosmetics brand "SKΠ" as an example; considering that cosmetics usually do not use model or type specification to describe its product characteristics, hence "SKΠ" has inherent distinctiveness. Similarly, "y42" which does not signify the quality, characteristics or other descriptions of the designated services "data processing" in Class 35, "computer programming; computer data processing and provision of research and development" in Class 42 " as well as the services similar thereto, is not descriptive to the designated services and is capable of making the relevant consumers recognize it as a sign identifying the source of the services; thus is qualified to be registered as a trademark inherently.
3. The term "y42" is not a generic name or relevant description of the designated services commonly used by businesses to denote the service in the same trade. Besides, the applicant is using "y42" in the manner of a trademark with color or a logo like "
", "
", "
" or "
" which apparently will give the relative consumers the impression that "y42" is a sign could identify the source of the goods/services.
4. In addition to the inherent registrability of "y42", the trademark "y42" also has acquired distinctiveness and secondary meaning through long-term and extensive use by the applicant in the world including in Taiwan which meets the requirement that if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant, it is registrable as a trademark provided in Articles 29-2 of Taiwan Trademark Act.
After considering the above arguments, the IPO agrees that the mark "y42" does not violate Articles 18-2 and 29-1(1) & (3) of the Taiwan Trademark Act and grants the registration thereto.