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FRENCH GEOGRAPHICAL NAME REGISTRABLE AS A TRADE-MARK

Ruey-Sen Tsai

The question of whether geographical names may be registered as trademarks in Taiwan has been much disputed in practice. The key legal provision in this regard is Article 23 Paragraph 1 Item 11 of the amended Trademark Act that took effect on 28 November 2003 (equivalent to Ar-ticle 37 Item 6 of the old act). It provides that a trademark design shall not be registered if it is likely to mislead the public as to the nature, quality, or geographical origin of goods. In re-cent years the Intellectual Property Office has rejected most applications to register geo-graphical names as trademarks, on the grounds that their use would be likely to mislead the public as to the geographical origin of the goods concerned.

However, in a 2002 administrative suit con-cerning an application to register "SUISSE" (the French name for Switzerland) as a trademark, the Taipei High Administrative Court held that use of the mark would not mislead the public as to the geographical origin of goods. The court stated that a trademark registration is effective only in the territory in which it is granted, and that the sole legislative purpose of the above provision of the Trademark Act is to protect the public in the territory from being misled as to the nature, quality, or geographical origin of goods. Accordingly, the "public" as referred to in the act means the public in Taiwan. In Taiwan, for-eign-language education is largely limited to English, and few people know French. Most consumers in Taiwan are familiar with the Eng-lish words "SWISS" and "SWITZERLAND", but are unaware that "SUISSE" has the same meanings in French. Therefore the use of "SUISSE" as a trademark would not mislead the public in Taiwan into believing that goods were of Swiss origin.

It remains to be clarified in practice whether, as the above judgment suggests, it will become easier to obtain trademark registration for geo-graphical names in other languages, such as Japanese, Korean, German, Spanish, Russian, or Italian.
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