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18 June 2018
According to the Examination Guidelines on Distinctiveness of Trademarks issued by the Taiwan Intellectual Property Office (TIPO), consumers will not usually perceive a slogan as an identifier of goods or services until they encounter consistent advertising or other practices by the brand user. Generally, therefore, slogans are not inherently distinctive in current trademark practice in Taiwan – applicants must prove that the slogan has acquired secondary meaning for it to be registrable.
The guidelines also state that a slogan that is highly creative or contains a highly distinctive trademark may be considered inherently distinctive in exceptional cases. However, if the slogan, as a whole, is still a mere description of goods or services, it will not be deemed distinctive. The question remains as to whether a slogan containing a well-known mark would be considered distinctive as a trademark.
In a 2018 administrative case regarding the registrability of a slogan, the Intellectual Property Court held that slogans containing well-known marks do not necessarily have inherent distinctiveness or acquired distinctiveness.
Regarding the issue of inherent distinctiveness, the applicant claimed that because its house mark was extremely well-known worldwide, TIPO should not disregard the existence of its famous house mark and should treat the trademark to be filed as a regular slogan.
However, the Intellectual Property Court stated that the assessment of inherent distinctiveness should be determined on the overall look and feel of the trademark. In this case, the trademark to be filed was just a slogan (ie, a mere description of the maker or the designer of the goods) and relevant consumers could not treat it as an identifier of the goods.
With regard to acquired distinctiveness, the applicant claimed that:
The applicant also stated that the slogan had acquired trademark registrations in multiple countries worldwide.
However, the Intellectual Property Court held that acquired distinctiveness should be determined based on whether Taiwanese consumers perceived the slogan as an identifier of the goods. The evidence showed that consumers still required the applicant's other trademarks in combination with the slogan to distinguish the source of goods.
In this case, the main marks were the actual identifiers, not the slogan. Had the main trademarks been removed from the slogan, the relevant consumers would have been unable to identify the source of goods from the rest of the slogan.
For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 715 3300) or email (firstname.lastname@example.org). The Lee and Li website can be accessed at www.leeandli.com.
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