The Intellectual Property Court rendered the 106-Hang-Shang-Su-48 Administrative Decision of November 8, 2017 (hereinafter, the “Decision”), holding that if a text is used to indicate or differentiate the sources of goods or services, whether the text is distinctive should depend on whether such text is an existing word or thing. If such text is a newly created word without any specific existing meaning per se, it is inherently distinctive. Conversely, if such text is an existing word and is a common or typical expression, since it is a public or cultural good which the public may freely use, the consumers usually do not view it as a mark that indicates and differentiate the sources of goods or services.
According to the facts in this case, the Plaintiff applied to register the “Cool Coffee and Device” trademark (hereinafter, the “Trademark at Issue”). The Defendant held, following its examination, that the Trademark at Issue should not be registered for lack of distinctiveness. Dissatisfied, the Plaintiff brought an administrative action.
According to the Decision, “Cool Coffee” denotes an expression of admiration for coffee products and merely conveys the inherent meaning of the text but cannot create any metaphoric association in the minds of relevant consumers to further identify it as a mark that represents the sources of goods and differentiates from the goods of others. Therefore, it is not inherently distinctive. In addition, although the materials showing the results of the Plaintiff’s search of “Cool Coffee” as a keyword on Google mentioned “Cool Coffee,” still they were used mostly in conjunction with “KoolCaffee” and all indicated that the Plaintiff operated restaurant services through the above-mentioned cafe rather than represented the sources of goods for which the Trademark at Issue are designated. Moreover, there was no picture that depicted the Trademark at Issue. Therefore, even the above materials could hardly indicate the use of the Trademark at Issue. In other words, there was no way to prove that in the course of transaction the Trademark at Issue became a distinctive mark that represents the sources of the goods for which the Trademark at Issue is designated after the Plaintiff’s long-term and massive use. Hence, it did not acquire distinctiveness.