A Descriptive Trademark Name Of Its Designated Goods Should Be Deemed As Lack Of Distinctiveness And Not Allowed For Registration In Taiwan
2011/03/08 TaiwanFollowed an unfavorable decision made by the Taiwan Trademark Registry, the Taiwan Intellectual Property Court also rejected the application bearing the Chinese characters “ 
(invisible)” for registration, which trademark was deemed lack of distinctiveness.
In March 2008, the Procter ＆ Gamble Company from the United States filed the said trademark “invisible” in Chinese designating the goods in relation to sanitary napkins, aromatic solvents not for individual use, menstrual or sanitary pads, and sterilizers for tissues.
Nevertheless, the Taiwan Trademark Registry held that the said mark was descriptive and correlated closely with the designated goods, and further rejected the application for registration. Such decision was referred to the Trademark Law in Article 23 (1) 2, that “a trademark application shall be rejected if the proposed trademark does satisfy representing the shape, quality, function(s) or other descriptions of the goods or services”.
The Procter ＆ Gamble Company, on the other hand, argued that other competitors in the same industry do not use the phrase “invisible” to describe or explain the related products. When evaluating the distinctiveness of the mark, “invisible” must be rather considered as a “random identification” and therefore the Court should revoke the unfavorable decision made by the Trademark Registry against the application.
However, the Court disagreed with the applicant and pointed out that of whether or not the mark is descriptive of the products should depend on the social common sense regarding the definition of the products and such correlations, regardless of the general descriptions used in the industry for the products.
Accordingly, the Court concluded that the said mark “invisible” was descriptive of its designated goods and lacked distinctiveness. Thus, the general consumers should not be able recognize and distinguish the source of the said mark from others and the applicant’s claims were rejected.
Organized and translated by Jenny Yu
International Affairs
