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Trademark Distinctiveness Varies with Changes in Social Environment
A trademark shall not be registered if it consists merely of a description of the quality, use, raw material, geographic origin, or relevant properties of the designated goods or services, as set forth in Article 29-I-(1) of the Trademark Act. However, the criteria for determination of whether "a trademark is merely descriptive of any of the designated goods" are hard to be defined and shall be decided wholly upon a case-by-case basis.
The Intellectual Property Court held in an administrative litigation judgment in 2013 concerning the issue of the trademark distinctiveness for a trademark registration application case that whether or not a trademark is descriptive of the designated goods is not definitely unchangeable, but will vary with the changes in social environment, consumers' perception and status of actual use in the market.
The applicant of this trademark application ever acquired the registration of the Trademark "治敏" (pronounced "Zhi-Min") in 1982. However, this trademark registration had extinguished because no renewal was filed in 2002 when the term of the trademark registration expired. The same applicant filed an application again for registration of the same two words "治敏" (pronounced "Zhi-Min") as a trademark again in 2012.
The Intellectual Property Court points out, although the trademark was granted registration before, as a combination of the two Chinese characters "治" (pronounced "Zhi") and "敏" (pronounced "Min"), as perceived by the public, refers to allergy treatment and does not create any new meaning, the trademark as a whole still gives the first impression that it denotes the meaning of allergy treatment rather than a coined compound word. Therefore, the use of such combination as a trademark for "eye care and ophthalmic pharmaceutical preparations" simply describes that the designated goods are used to treat discomfort of allergic eyes and that the designated goods cover medicines treating allergy. Such a trademark is directly or obviously descriptive of the uses or related features of the designated goods, and cannot cause relevant consumers to recognize "治敏" (pronounced "Zhi-Min") as a sign identifying the goods and distinguishing such goods from another's goods or services. Accordingly, such a trademark application shall not be allowed for registration as it lacks trademark distinctiveness specified in Article 29-I-(1) of the Trademark Act.
The Intellectual Property Court also emphasizes that there are multiple medicines for treating allergy. As the two words "治敏" (pronounced "Zhi-Min") of the trademark means "treatment of allergy" as perceived by consumers, the term is descriptive of the designated goods rather than a sign identifying the source. Also, from the prospect of competition, other competitors may also need to specifying their goods or services by using "治敏" (pronounced "Zhi-Min") or "治療過敏" (which means treatment of allergy) during the course of trading. If the applicant in this case is invested with the exclusive right to use "治敏" (pronounced "Zhi-Min") as a trademark, it would affect fair competition in the market, which is really unfair.