Why Surnames are Difficult to Register as Trademarks: Court Confirms Surnames May Have Distinctiveness

Date: 4 July 2022

In Taiwan, local applicants often consider using common foreign family names while designing their trademarks. Since there are only limited surnames, applying them for trademarks may cause problems such as likelihood of confusion. Therefore, whether trademarks consisting of family names are distinctive becomes a significant but controversial issue.

The Taiwan Intellectual and Commercial Court (“the IP Court”) had long held that trademarks consisting of family names do not have inherent distinctiveness. However, the IP Court gradually lowered the requirement of evidence of use and, accordingly, the standard of determining distinctiveness in recent rulings. To name a few examples, both in the case of BIG FUN International Co., Ltd. V. IPO (the J. KAO case)1 and that of Ray Haber v. IPO (the GERRY case)2 , the IP Court adopted “whether the English names used as trademarks have any connection to their designated goods” as the standard of examining the inherent distinctiveness of the trademarks.

Last year, in the case of MORITA BIOTECH CO., LTD. v. IPO (the MORITA case), the IP Court adopted the aforesaid standard once again and asserted that the Japanese family name, “森田 (Morita)”, has inherent distinctiveness. In this article, we will introduce the Morita case and the court ruling.

Case Fact

MORITA BIOTECH CO., LTD. (“MORITA BIOTECH”, the plaintiff), a 90-year-old Taiwanese company, is the most popular local cosmetics brand in Taiwan. It has a rather proactive trademark strategy in Taiwan and already acquired more than 300 trademarks, including the subject trademark “MORITA COSMETICS Dr. Morita (森田藥粧Dr. Morita)” which designated services in class 35.

Ms. Lai, the holder of the earlier trademark “森田”, which consists of two characters identical to the first two characters of the mark “森田藥粧”, filed an invalidation petition against the subject trademark a year after its registration. She asserted that two of the services in class 35, namely “retailing and wholesaling of drugs” and “retailing and wholesaling of nutritional supplements”, constitute likelihood of confusion and imitation with her earlier trademark. Both the Taiwan Intellectual Property Office (“the IPO”) and the Petitions and Appeals Committee of the Taiwan Ministry of Economic Affairs held that the subject trademark should be cancelled. MORITA BIOTECH then filed an administrative lawsuit with the IP Court. However, the lawsuit was also dismissed by the first-instance court in December 2021.

 

The subject trademark The earlier trademark

 

Trademark Specimen

 

“MORITA COSMETICS

 Dr. Morita”

(Registration No.: 01808798)

 

“MORITA”

(Registration No.: 01092944)

Designated Goods/Services

Class 35

retailing and wholesaling of drugs; retailing and wholesaling of nutritional supplements; retailing and wholesaling of cosmetics, etc.

Class 5

nutritional supplements

Opinion of the IP Court (the first-instance court)

1. “MORITA” has a certain degree of distinctiveness while using on designated services of the subject trademark

While “MORITA” shown in the two trademarks is a Japanese family name which is an existing term, it still has a certain degree of distinctiveness as the term itself has no connection to the designated goods/services of the trademarks.

2. The similarity between the subject trademark and the earlier trademark is not low

The “MORITA (森田)” in a bigger red font of Japanese kanji characters which stand out from the specimen is the main distinguishing part of the subject trademark. Although there are differences in the design and colors between the two trademarks, the relevant consumers compare similar trademarks by vague impression instead of a side-by-side comparison while shopping for goods or services. Furthermore, two trademarks were visually, aurally and conceptually similar to a high degree. Consequently, the subject trademark and the earlier trademark are highly similar under separate observation and in the actual purchasing scenarios.

3. Since the “first-to-file” principle is adopted by the Taiwan Trademark Act, the protection of the earlier trademark right holder should be prioritized

Although MORITA BIOTECH tried to prove that the relevant consumers in Taiwan had already been quite familiar with the subject trademark and that they would not confuse the two “MORITA” trademarks, it could not deny the fact that a trademark which is much more popular than the earlier trademark at the time of application may still cause likelihood of confusion among the relevant consumers. Since the principle of “first-to-file” is adopted by the Taiwan Trademark Act, holders of earlier trademarks should be granted higher level of protection inherently. In other words, protection of the holders of earlier trademarks should always be prioritized in both the situation of direct confusion and that of reverse confusion.

Wisdom Suggested Strategies

According to point 4.6.1 of the Examination Guidelines on Distinctiveness of Trademarks published by the IPO, family names used as trademarks are not distinctive in general. They can only be granted registration if proven to have obtained acquired distinctiveness. The aforesaid standard has also been adopted by the IP Court and been applied to family names in foreign language. As a result, examiners of the IPO have always requested applicants applying family names for trademarks to submit plenty of evidence of use before recognizing the acquired distinctiveness of these trademarks.

However, recent judicial rulings seem to reverse the aforesaid practice. When it comes to examining the distinctiveness of foreign family names, the IP Court has lowered its standard in several recent cases. Whether the IP Court will continue to lower the standard and whether the IPO will follow up on amending the regulations on examining the distinctiveness of foreign family names trademarks are important topics worthwhile to keep a close eye on.

However, before the IPO makes any amendment to the regulations, if applicants wish to apply family names for trademarks in Taiwan at the current stage, they should still conduct trademark availability searches prior to filing applications to ensure that there is no earlier trademark which may become an obstacle to registration. Also, once the trademark strategy is confirmed, collecting evidence of use and advertisement of trademarks actively is a must-have step proving that the trademarks have already obtained acquired distinctiveness. This would be helpful for dealing with the potential obstacles throughout the examination of application, and protecting the trademark rights after being granted registration.

[1] Taiwan IP Court 2020 XingShangSuZi No.99 Judgment

[2] Taiwan IP Court 2020 XingShangSuZi No.52 Judgment

 

For more information on this topic or if you have any questions, please contact Wisdom by email (info@wisdomlaw.com.tw) or phone (+886-2-2508-2466 ext. 220). Click here to subscribe to our Wisdom News and stay updated on the latest intellectual property developments.

 

 

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