A suggestive mark is different from a descriptive mark for being distinctive(Taiwan)

Jane Tsai

The Intellectual Property Court rendered the 104-Hang-Shang-Su-131 Decision of April 14, 2016 (hereinafter, the “Decision”), holding that a suggestive mark, which suggests the relevant features of the designated goods or services by implicit or metaphoric means, is distinctive.

In this Decision, the Plaintiff asserted that the registered mark ÒSun Be BarÓ of the Intervenor, consisting of three single syllables pronounced as “San Bi Ba” in Taiwanese (meaning “very skinny”) and being designated for use on goods such as Chinese medicine, western medicine and nutritional supplements, is not distinctive since the term is a direct and obvious descriptive text which involves relevant product features such as “weight-losing” functions or efficacy. Therefore, an invalidation application was filed on the ground that the registration of the trademark at issue violated Article 23, Paragraph 1, Subparagraph 2 of the Trademark Law effective at the time of the registration and Article 29, Paragraph 1, Subparagraph 1 of the current Trademark Law. An administrative disposition that rejected the invalidation application was subsequently rendered by the Intellectual Property Office. Dissatisfied, the Plaintiff filed administrative appeal, and the Ministry of Economic Affairs rendered an administrative disposition which set aside part of the original disposition which rejected the invalidation application for the trademark at issue designated for use on “Chinese medicine, western medicine, oral medicinal liquids, tea for medical applications, and magnetic acupuncture patches,” required the original disposition agency to render a legally appropriate disposition, and rejected the rest of the administrative appeal. Dissatisfied, the Plaintiff brought administrative action in the Intellectual Property Court.

According to the Decision, a suggestive mark, which suggests the relevant features of the goods or services for which the mark is designated by implicit or metaphoric means, is distinctive. In comparison, a descriptive mark contains a direct and obvious description, which relevant consumers view it as a description of goods or services rather than a mark that identifies the sources. Whether a mark carried by goods or services contains a direct description or suggestive depiction may be determined by considering the following factors: 1. The definition of such words in dictionaries, newspapers or magazines may be referenced to ascertain the general meaning of such words in the minds of the public. In addition, the general meaning of specific words in the minds of the public will also evolve over time or along with social changes. Therefore, the general meaning of such words in the minds of relevant consumers upon registration application of the trademark should serve as the basis. 2. The imagination required by the relevant consumers to understand the nature of the words and goods or services may be considered. The lower the extent of imagination, the more likely the trademark contains directly descriptive words. Conversely, if more imagination is required, the trademark tends to consist of suggestive words. 3. For competitors of the same or similar classes of goods or services, if the extent of the competitors’ need to use such words to depict the features of their goods or services is greater, the words tend to be descriptive words. 4. A descriptive or explanatory trademark is used to directly describe the nature, functions, quality, applications, features or other closely connected elements.

According to the Decision, the trademark at issue carries the meaning of the Taiwanese homonym “San Bi Ba,” which is a common Taiwanese expression freely and publicly used by the public in Taiwan. The trademark at issue leaves a novel and unique impression on relevant consumers who need to comprehend the connections between the trademark at issue and the above-mentioned goods for which the trademark is designated with a certain degree of imagination, thinking, perception or inference. Therefore, it is quite obvious that the trademark at issue is a suggestive mark for the 15 designated goods including nutritional supplements. In addition, the Plaintiff also failed to provide evidence to substantiate that the trademark at issue, which is “Sun Be Bar,” had been used by competitors in the same industry to describe the features of the above-mentioned goods. Therefore, the registration of the trademark at issue does not undermine fair market competition.