The standard for determining suggestive marks and pure descriptions of product functions (Taiwan)

Yuki Chiang

On December 10, 2020, the Intellectual Property Court rendered the 109-Hang-Shang-Su-80 Decision of December 10, 2020.  According to the underlying facts, the Plaintiff applied to register “有酵蜜” [literally meaning “Enzyme-containing Honey”] as a trademark (hereinafter, the “Application”) and designated the same for use on goods and services in Class 30, which are honey, royal jelly, propolis, vinegar, fruit vinegar for flavoring, honey vinegar for flavoring, etc.,” under Article 19 of the Enforcement Rules of the Trademark Act.  However, the Defendant (the Intellectual Property Office) concluded, as a result of its examination, the registration application should be rejected for lack of distinctiveness.

According to the court, Article 18, Paragraph 2 of the Trademark Act provides that a trademark should be distinctive, which means it should be capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.  In addition, Article 29, Paragraph 1, Subparagraph 1 of the same law stipulates that if an application only describes the quality, intended purposes, raw materials, place of origin, or relevant characteristics of the designated goods or services, such application is not distinctive and registration should be denied.

Although the Plaintiff claims that the meaning of “有酵蜜” [Enzyme-containing Honey] in this application when observed in its entirety is “fermentation-like sweetness,” and that when a consumer puts the ‘有酵蜜’ product into the mouth of his/her lover, fermentation-like sweetness will be created with a slow aftertaste, still it is quite obvious that the application contained descriptions that did not describe the nature, ingredients or relevant characteristics of the designated products.  Since this is a suggestive mark, it is basically required to be inherently distinctive.  However, the court held that a so-called “suggestive” mark refers to a mark that implies features such as the quality, functions or other relevant ingredients, characteristics, and the consumers are required to use a certain degree of imagination, thinking, feeling or reasoning to comprehend the association between the mark and the goods or services (see Paragraph 2.1.3 of the Standards for Examining Trademark Distinctiveness). This application designated “有酵蜜” [Enzyme-containing Honey] for use on honey, royal jelly and propolis products.  Without imagination and reasoning, relevant consumers can directly comprehend that it is a combination of “containing,” “enzyme” and “honey” and denotes “enzyme-containing honey” based on the literal meanings.  Therefore, this can hardly be considered a suggestive mark and, the Plaintiff’s assertion that it has acquired distinctiveness is not acceptable.