Paragraph 1, Article 29 of the Trademark Act says that, "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; (2)Consisting exclusively of the generic mark or term for the designated goods or services; or (3)Consisting exclusively of other signs which are devoid of any distinctiveness."  Paragraph 2 of the same article says that, "Subparagraph 1 or 3 of the preceding paragraph shall not apply 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."  The term "description of goods or services" means that, according to the general concept of society, the mark is a direct and obvious description of the shape, quality, function, use or other relevant components, nature and other characteristics of the goods or services themselves, and consumers may regard such descriptive marks as descriptions of the goods or services themselves, without having the function of identifying the source.  However, if the applicant can prove that the descriptive mark has become the identifier of the applicant's goods or services in the transaction, and has thus acquired the distinctiveness, registration of the trademark can still be granted in accordance with Paragraph 2, Article 29 of the Trademark Act.

 

Regarding basis for determining the distinctiveness of descriptive marks, the Intellectual Property and Commercial Court ("IPCC") ruled in its Judgment No.: 111-Xing-TM-Su-81 that, "The determination of distinctiveness shall be made on the basis of the relationship between the trademark and the designated goods or services. If the goods or services are of a general daily life nature, they should be judged from the viewpoint of the relevant consumers in the general public" and that " The mark should be recognized as having distinctiveness to consumers if it serves the function of indicating the source of the goods or services, rather than merely conveying information about the goods or services themselves or their contents."  The IPCC further based on the foregoing basis, ruled that, the applicant's use of the elements "A2" and "a2" in milk products containing "A2-beta casein" is not an established term in the dictionary, and the relevant consumers are not able to know the meaning of the word directly from the word, so the elements "A2" and "a2" should be qualified as an indication of the origin of the product.

 

With regard to the invalidation petitioner's citing reports of the European Food Safety Authority (EFSA) and scientific journals, and arguing that the disputed trademark "A2" was used to describe or illustrate milk products containing "A2-beta casein" and therefore could not be given a registered trademark, it was held that the information advanced by the invalidation petitioner was in the nature of a professional newsletter aimed at casein farmers and was not intended for the general consumers.  As it is difficult for general consumers in Taiwan to easily access such professional information before purchasing a product and learn that "A2 cow's milk" is synonymous with "pure A2 type β-casein cow's milk", the applicant's use of the "A2" and "a2" series of elements in milk products should be deemed as having distinctiveness.

 

In practice, it is common for applicants to use descriptive marks mixed with descriptions of goods or services, but are they simply "descriptions of goods or services" and should not be given as registered trademarks? Or do they have distinctiveness because they serve the function of indicating the source of the goods or services in addition to conveying information about the goods or services themselves? Also, will the right of the competitors' use the description as a trade description be unduly restricted because of the registration of the trademark for the described mark? The foregoing issues are often controversial. The IPCC clarifies in the foregoing judgment that the determination of "description of goods or services" should be based on the viewpoints of the relevant consumers in the community.