經通國際智慧產權事務所

After close to 5 years of trial, the hope for Cathay Financial Holdings to register the voiced trademark, “Enrich your life”, is finally vanished. The Intellectual Property Court (IPC) commented that the voiced trademark lacks distinctiveness, and was not primarily used on services as designated by the application; therefore, the IPC is not convinced that the voiced trademark has acquired distinctiveness through actual use. Consequently, the IPC ruled in favor of the TIPO’s original decision.

The collegiate bench of the IPC suggested that the melody of the voiced trademark is overly simple and the sound is not distinctive to the general consumers. In combination to the way “Enrich your life” is voiced, the voiced trademark, from the general consumers’ perspective, mimics a generally spoken phrase. Therefore, it does not contain the inborn distinctiveness required for the general consumers to distinguish services of different sources.

The collegiate bench further pointed to the fact that Cathay Financial Holdings has not used the voiced trademark on services as designated by the application under class 35 for “publicity and delivery of publicity matters for advertisement” and “on-line advertising on computer networks.” Consequently, there is no way to determine that the voiced trademark has acquired distinctiveness through actual use.

The original application was filed to the TIPO by Cathay Financial Holdings in March 2004, and rejected due to the fact that the voiced trademark lacks distinctiveness. Following the rejection, an appeal and an administrative lawsuit were filed to the relevant authorities. The administrative lawsuit was rejected by the Taipei High Administrative Court in July, 2007. Following the defeat, Cathay Financial Holdings filed an appeal to the Taipei Supreme Administrative Court and gained a favorable verdict, in which the case was to be re-trialed by the IPC.

Organized and translated by Daniel Chiang

International Affairs