Deep & Far Newsletter 2014 ©
When asserting evidence of acquired distinctiveness, one shall note the factors of ways and space-time backgrounds of the trademark use
Yu-Li Tsai, Patent Attorney
■ Bachelor of EE from National Taiwan University
■ Master from Telecommunications from National Taiwan University
■ IP Master from New Hampshire Law School (Franklin Pierce)
In a recent administrative litigation case of 2013, the complainant applied for registration before the defendant (TIPO) for the trademark “治敏” designated for use on goods of “medicaments used in eye care and ophthalmology field”. After examination, the TIPO held that “治敏” is a description of the use or relevant properties of the designated goods and should not be registered, and made the Trademark Rejection Action No. 0344698. The complainant was not satisfied and initiated an appeal before the Board of Appeal (BOA), and the appeal was again rejected by the BOA. The complainant then initiated the administrative litigation before Intellectual Property Court (IPC).
After investigating the device of the trademark “治敏” applied for registration, the mark simply consists of horizontal printing of the Chinese words “治敏”. According to common knowledge in society, “治敏” has meaning of “treating allergy (治療敏感)” in view of its plain meaning, and thus is not a self-created word combination alleged by the complainant . Therefore, if the complainant used the trademark “治敏” as a trademark device and designated for use on goods of “medicaments used in eye care and ophthalmology field”, the trademark’s visual impression given to the relevant consumer can only generate a meaning of general description that the goods are used to treat eye discomfort of an allergy. The trademark at issue only describes the use or relevant properties of the designated goods, and it is insufficient for the relevant consumers to recognize “治敏” as a mark indentifying the goods and distinguish the goods from others goods or service. Therefore, the trademark at issue does not have distinctiveness and falls under an un-registrable circumstance as stipulated in Item 1 of Paragraph 1 of Article 29 of the current Trademark Act.
The complainant asserted that the eye drops marked by the trademark at issue has held a permit issued by the Department of Health, Executive Yuan since 1981, that the complainant has sold the goods with the trademark at issue in Taiwan through the affiliated company – ○○ Limited Company of Taiwan, and that the trademark at issue has acquired distinctiveness. The complainant further submitted evidence such as the permit issued for the eye drop goods marked with the present trademark from the Department of Health, Executive Yuan in 1981, an allowance of the permit application refiled in 1992, introductions regarding the eye drop goods marked with the present trademark on the official websites of ○○ hospitals, and the search results of “治敏眼藥水(i.e. 治敏eye drop)” on the web pages of Yahoo and Google. However, after investigation, the introductions regarding the eye drop goods marked by the present trademark were “SPERSALLER治敏滅菌眼藥水 (SPERSALLER治敏sterilization eye drop)”. Either the one “SPERSALLER治敏滅菌眼藥水” searched through GOOGLE on the Internet, or the introductions submitted by the complainant regarding the present eye drop goods on the official websites of ○○ hospitals, the distinctive part of identifying marks was all “SPERSALLER”, and the “治敏滅菌眼藥水” were only the relevant descriptive words describing “treating allergy”. Therefore, objectively speaking, the words “治敏滅菌眼藥水” only gave relevant consumers an impression of describing a medicinal liquid for treating an eye allergy, and are insufficient for the relevant consumers to recognize “治敏” as a mark indentifying the source of the goods. Furthermore, although, according to the evidence submitted by the complainant, the ○○ Limited Company of Taiwan has held a pharmaceutical permit for “治敏滅菌眼藥水” from the Department of Health, Executive Yuan since 1981 and actually marketed the goods on the market, the package inserts and packages of the pharmaceuticals also simultaneously used the word “SPERSALLER”. The overall use led many to believe that only the word “SPERSALLER” is its registered or used trademark, and “治敏” or “滅菌” is only description of relevant properties, such as use or purpose of the goods.
The complainant asserted that he had ever used “治敏” as a trademark, designated it on the goods of pharmaceuticals, and obtained a previous trademark registration No. 171363, and thus, the defendant’s assertion that the current trademark lacks distinctiveness and rejection of its registration obviously violated the principle of equality. However, the standard of whether a trademark is a description of its designated goods is not constant, but varies with the space-time background, such as the social environment, recognition of relevant consumers and the circumstances of actual uses in the market. After investigation, trademark registration No. 171363 was allowed to be registered in 1982 and extinguished because of failing to renew the registration before expiration of the period of the trademark rights. The registration was allowed 31 years ago, and the space-time background at that time and at the time of filing the present application are substantially different. The trademark “治敏” at issue is a description of the designated goods according to relevant consumer recognition in modern society in which there are various pharmaceuticals for treating allergies. Therefore, consumers easily recognize the trademark at issue as a description of the goods or services rather than a mark for identifying a source. Moreover, from the view point of competition, other competitors may also need to use “treating allergy” to describe their goods or services in the marketing processes. If the complainant had been granted an exclusive right, the fair competition in the market would be affected, and thus, the grant would be clearly unfair and the registration should not be allowed. Therefore, even though the complainant obtained a trademark using the same words in 1982, it cannot be held as arguable evidence for justifying the allowance of the registration of the trademark at issue.