Newsletter
"TM" MARKING NO PROOF OF TRADEMARK DISTINCTIVENESS
To be eligible for registration under the Trademark Act, a trademark must be sufficient to enable relevant consumers of goods or services to recognize the mark as identifying goods or services, and to enable them to distinguish such goods or services from those of other suppliers. This is the requirement for trademark distinctiveness, as set out in Article 5 of the Trademark Act. If a mark is not inherently distinctive, it must be proved that the mark has acquired distinctiveness. That is to say, the applicant must present evidence sufficient to show that through the applicant's use of the mark, the mark has come to identify the applicant's goods or services in trade, enabling consumers to distinguish them from the goods or services of other suppliers, so that registration may exceptionally be allowed. Otherwise, registration should be refused on the grounds of lack of distinctiveness.
The Act contains no express provision as to whether an applicant's use of the letters "TM" placed at the upper right-hand side of a mark when used on goods or services, to express that subjectively the applicant is using the mark as a trademark, can be taken as evidence that the design possesses, or has acquired, distinctiveness as a trademark. As a result, opinions on this issue in practice have been very much divided. In a 2007 judgment the Taipei High Administrative Court took the negative view: the court held that a determination must still be made on the basis of objective evidence regarding the mark's use, according to the criterion of whether related businesses or consumers recognize the mark as identifying a source of goods.