The Court's New View on Geographical Names: Analyzing Acquired Distinctiveness in the YORKSHIRE TEA Invalidation Case
Date: 4 December 2025
【Volume 161】
Trademarks incorporating geographical names often encounter significant legal hurdles during the registration process in Taiwan. These challenges typically arise from three primary concerns:
First of all, a trademark consisting of a geographical name can be considered misdescriptive if the geographical name does not correspond to the actual place of origin of the designated goods or services (Cf. Paragraph 1(8), Article 30 of the Trademark Act), such as in the cases of “Da-Cheng Lu-Ye” and “Boy London.” 1 2
Secondly, government agencies may restrict the use of a trademark if the geographical name it contains concerns the protection of public interests or regional images.
Thirdly, a trademark containing a geographical name is often considered lacking distinctiveness, and hence ineligible for registration, if it describes exclusively the place of origin of the designated goods or services (Cf. Paragraph 1, Article 29 of the Trademark Act). However, if such a sign has been recognized by consumers as an indicator of a specific source through long-term use, it can be argued that the sign has acquired distinctiveness according to Paragraph 2, Article 29 of the Trademark Act.
In light of this, a recent trademark invalidation case involving the brand “YORKSHIRE TEA” has emerged as a significant precedent. The Intellectual Property and Commercial Court (IP Court) delivered an elaborate analysis of the criteria for determining acquired distinctiveness for geographical trademarks (IP Court 2024 Shing Shang Su Zi No. 40), offering critical insight into the current judicial practice.
Case Fact
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YORKSHIRE TEA by BETTYS & TAYLORS GROUP LTD |
Barista Yorkshire Milk Tea by Barista Coffee |
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Image source: B&T official website |
Image source: Barista Coffee official website |
In 2017, the British company BETTYS & TAYLORS GROUP LTD (hereinafter, “B&T”) applied to the Taiwan Intellectual Property Office (hereinafter, “TIPO”) for the registration of the sign “YORKSHIRE TEA”, designating its use for tea-related goods under Class 30. TIPO approved the registration on the ground that the sign had acquired distinctiveness.
Later, FULL FILL INDUSTRIAL CO., LTD. (formerly known as BARISTA COFFEE ROASTING CO., hereinafter “FULL”) filed an invalidation application against YORKSHIRE TEA to TIPO, claiming that the sign could mislead consumers about the place of origin of its designated goods and that it lacked distinctiveness. TIPO dismissed FULL’s application, and also dismissed FULL’s subsequent administrative appeal. The company then filed an administrative litigation, which was once again dismissed by the IP Court.
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Disputed Trademark |
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Reg. No. 02179600 |
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Trademark Specimen |
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Trademark Holder |
BETTYS & TAYLORS GROUP LIMITED |
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Registration No. |
02179600 |
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Registration Date |
November 1, 2021 |
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Designated Goods |
Class 30: Tea bag; scented tea; tea; herbal teas; fruit tea; iced tea, etc. |
Summary of the Judgment by the IP Court:
The IP Court found that YORKSHIRE TEA had acquired distinctiveness, and dismissed FULL’s case, based on the following reasons:
1. Determination of whether a sign has acquired distinctiveness through actual use should be based on an integrated examination of the duration of use, the manner of such use, the actual use in trades, and consumers’ perception of the sign.
Since the late 1970s, B&T has adopted YORKSHIRE TEA as the name of its tea brand. The brand has a long history in the UK, and YORKSHIRE TEA has been registered in multiple countries. By 2000, products under the brand have been consistently sold in Taiwan through various channels, both physical and online, including supermarkets, chain coffee shops, and e-commerce platforms.
Over the years, the market share and visibility of the brand have grown steadily. The evidence proposed by B&T includes the actual packaging of the goods, pictures displayed in stores, transaction records, as well as promotional materials.
Such evidence demonstrates that YORKSHIRE TEA has accumulated a long-term and consistent history of use and has thus established its association with a specific source in Taiwanese market. Upon reading the sign YORKSHIRE TEA on B&T’s products, consumers in Taiwan can identify their source, rather than merely taking it as a descriptive term.
2. Determination of whether a sign has acquired distinctiveness should not solely depend on the abstract analysis of the universality or descriptiveness of its text per se. Rather, it should be evaluated concretely within the context of its actual use along with consumers’ perception of the sign.
B&T has built the “YORKSHIRE TEA” brand for more than a century and has invested considerable time, money, and efforts to allow the extensive use of YORKSHIRE TEA on tea-related goods and services, as well as in an enormous number of advertisements and promotional activities. Such facts are substantial to demonstrate the sound foundation of YORKSHIRE TEA’s reputation.
Wisdom Analysis
Below are Wisdom’s suggested strategies for filing applications for trademarks consisting of geographical names:
1. Avoid applying for trademarks that contain exclusively a geographical designation.
Pure geographical designations (such as “Taipei,” “Italy,” and “Yilan”) have extremely low approval rate in the application process. We recommend that applicants avoid using geographical designations as the sole constitutive element of a trademark.
2. Incorporating other distinctive elements in design.
Geographical designations tend to be more distinctive when combined with other creative elements such as brand names or graphic elements (e.g., landscapes, totems, and map outlines). By incorporating other elements, a geographical name can be transformed from a descriptive expression into a symbolic element, thereby increasing the likelihood of passing the distinctiveness examination.
3. Carefully select classes of designated goods/services for registration.
The descriptiveness of a geographical name depends on the designated goods/services. For example, “Alishan” used for “teas” may be descriptive; however, when used for “online platform services,” the term is arbitrary and thus has a higher chance of being approved for registration. Applicants should select classes of goods/services that have a weak correlation with the geographical name based on the nature of the goods/services and the marketing context. Thereby, applicants may avoid the pitfalls of descriptiveness.
4. Collect and prepare evidence of use.
If an enterprise has used a geographical name as their trademark for a significant period of time and has acquired recognition in the market, the company may claim that the sign has acquired secondary meaning and therefore has distinctiveness. We recommend preparing the following materials as evidence: sales revenue and distribution data, promotional records (including print, online, and video advertisements), media coverages, or market survey reports.
[1] For “Da-Cheng Lu-Ye,” see Taipei High Administrative Court 2002 Su Zi No. 1926 Judgment
[2] For “Boy London,” see Supreme Administrative Court 2019 Shang Zi No. 1074 Judgment
