GENERIC NAMES MAY ACQUIRE TRADEMARK DISTINCTIVENESS THROUGH USE

01/01/2009

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After registration of a trademark, if the mark has become a common sign, name, or shape for the goods or services for which it is designated, such that it is no longer a distinctive identifier of a specific source of goods or services, thus losing the basic characteristic required of a trademark, then under the provisions of Article 57 Paragraph 1 Subparagraph 4 of the Trademark Act, the Trademark Authority should cancel the mark's registration, acting ex officio or on application.

Conversely, an important issue in practice has been the question of whether it is possible for a common sign, name, or shape for designated goods or services, through use by a trademark registration applicant, to become a distinctive identifier of the applicant's goods or services in trade, so that it may be registered as a trademark.

Article 23 Paragraph 4 of the Trademark Act expressly provides that a mark representing the shape of goods or services may acquire distinctiveness through use and be registered as a trademark. However, the Act is silent as to whether a common sign or name for designated goods or services may be registered as a trademark if it has indeed acquired trademark distinctiveness. In a judgment dated 30 October 2008, the Taipei High Administrative Court held that in such circumstances, a common sign or name could be registered as a trademark.