經通國際智慧產權事務所

The famous air-condition dealer applied a sound trademark application for “DAIKIN”(Daikin’s Song DAIKIN) designating dolls was rejected by the Taiwan Intellectual Property Office (TIPO), the reason being that the song only reminds consumers of air-condition products. The company filed administrative lawsuit to the Intellectual Property Court; however, the Court maintained TIPO’s decision, believing that the dolls are only free gifts for the sales of the electronic appliances and cannot define the goods produced and sold by the said brand.

According to the present Trademark Law in Taiwan, Article 5, item 1, “a trademark may be composed of a word, figure, symbol, color, sound, three-dimensional shape or a combination thereof”, and item 2, “a trademark as defined above shall be distinctive enough for relevant consumers of the goods or services to recognize it as identification to that goods or services and to differentiate such goods or services from those offered by others”, are the requirements for inherent distinctiveness. However, the Article 5, item 2 shall not be applied if the proposed trademark has acquired distinctiveness after use, which is indicated in Article 23, item 4.

The TIPO believed that the evidences provided by the company were all used for air-conditions, fans, air purifiers, etc. The content of use did not include dolls, thus it was difficult to conclude the sound trademark, designating dolls, puppets, muppets, etc, had become the identification marking for the company’s products, which differentiated their products from other companies. The trademark is not distinctive; therefore, registration was not allowed.

In the administrative verdict of the Intellectual Property Court, number 74, the Court believed that the “sumo dolls” were only free gifts for the appliances the Plaintiffs sold. When most consumers heard the “ DAIKIN”, connections would mostly be made to the company’s air-condition related products instead of the dolls and toys. The trademark is not distinctive, as the origin of the products cannot be known from the trademark; therefore, in accordance with Trademark Law, Article 23, item 1, number 1, the trademark was not allowed for registration.

An administrative litigation was also filed for the other song trademark application designating dolls by the same company, “NIHHON-DAIKIN”(NIHHON-ichiban DAIKIN), a song about 3 seconds sang by women and children. In the administrative verdict of the Intellectual Property Court, number 75, the Court believed that when the consumers hear the sound trademark, doubts may be raised regard to the selling of dolls of the said company; therefore, the origin of the dolls will not be misidentified and concluded the trademark is distinctive; therefore, the TIPO shall decide otherwise.

Organized and translated by Eunice Yang

International Affairs