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"EZPROXY" Obtaining Registration by Successfully Overcoming IPO's Provisional Refusal
Trademark "EZPROXY" designated for "computer related products" in Class 9 encountered a provisional refusal from Taiwan Intellectual Property Office (IPO) for the reason that the mark "EZPROXY", though as a whole is distinctive to be registered as a trademark to make the relevant consumers recognize it as a sign identifying the source of the goods/services, the term "PROXY" contained therein is of the meaning "computer proxy server" which associates with and is descriptive to the designated goods "computer related products" and may give rise to doubts as to the scope of the trademark rights; consequently, "EZPROXY" is not registrable according to the Trademark Act in Taiwan. After filing defense based on the following grounds, the applicant successfully obtains registration for "EZPROXY":
1. Though a sign which lacks of distinctiveness is not registrable as a trademark is prescribed in Trademark Act, if the applicant can prove that such sign, after intensive use on the market and is considered by relevant consumers such a sign indicating and distinguishing a particular source, it is deemed to have trademark function by acquiring secondary meaning and may be registered according to the Examination Guidelines on Distinctiveness of Trademarks and Trademark Act.
2. In the first place, it is contradictory and paradoxical that the IPO acknowledges the mark "EZPROXY" as a whole is distinctive and inherently registrable, but split the trademark into "EZ" and "PROXY" and subsequently claims that there is possibility the trademark owner or competitors in the same industry may misinterpret that the term "PROXY" enjoys exclusive trademark right; consequently, the applicant should disclaim the trademark right to use "PROXY" apart from the mark "EZPROXY".
Moreover, the applicant, Online Computer Library Center Inc. ("OCLC"), is the largest bibliographic information network worldwide, OCLC management members include nearly 60 public and private university libraries in Taiwan.
The mark "EZPROXY", through long-term and intensive use by the applicant in libraries affiliated with various institutions around the world, including Taiwan, relevant consumers have recognized it as a sign indicating and distinguishing a particular source and become a well-known trademark. Even if the mark "EZPROXY" is not inherently registrable, it has acquired a "secondary meaning" to be registered as a trademark according to the Articles 29-2 of Taiwan Trademark Act.
3. After considering the above arguments, the IPO agrees that the mark "EZPROXY" has acquired a "secondary meaning" identifying the source of the goods/services and grants the registration thereto.