經通國際智慧產權事務所

In December 2003, Taiwan Tobacco and Liquor Corporation (TTL) filed a trademark application for “Taiwan Hong Gaolian” (or “台灣紅高梁” in Chinese. “Hong” refers to the color red, while “Gaolian” refers to sorghum) and designated wine, Chinese spirit of sorghum (gaolian-jiou) and spirits [beverages]. The TIPO rejected the application because the trademark, which contains words that are descriptive to its designated goods, is likely to mislead the general consumers.

TTL then appealed to the Taipei High Administrative Court. The Court suggested that TTL was not able to provide proofs to show that the trademark was well-known to the general public. In addition, the trademark “Taiwan Hong Gaolian” fails to show its inborn distinctiveness as a whole. Consequently, the Court rejected TTL’s appeal. TTL then appealed the rejection to the Supreme Administrative Court, and the case was remanded to the Taipei High Administrative Court for reinvestigation. Upon reinvestigation, the Collegiate Bench of the Court, was in favor of maintaining the original decision (i.e.: rejection of the application) by arguing that the trademark was composed of “Taiwan”, which is the name of a place, and “Hong Gaolian”, which is a produce for making the wine. Such a trademark is descriptive to the designated goods, does not distinguish the sources of different products, and will mislead the general consumers into believing that the composition of the trademark refers to the contents of the goods. Due to the aforementioned shortcomings, the trademark application is to be rejected.

TTL, on the other hand, argued that through intensive TV and radio commercials and newspaper and magazine advertisements, the trademark has acquired distinctiveness, and the general consumers will easily relate the trademark to TTL’s products. After reviewing the evidences submitted by TTL, the Collegiate Bench of the Court found that rather than using the trademark as a whole, TTL broke the mark into its individual components (i.e.: “Taiwan” and “Hong Gaolian”) and collocated these components with another trademark, “Taiwan Hong Yushan and device” (or “台灣紅玉山” in Chinese. Yushan refers to the Jade Mountain). Such a collocation has strayed from the trademark “Taiwan Hong Gaolian”; the general consumers, therefore, will not be able to relate “Taiwan Hong Gaolian” to TTL or TTL’s products. TTL further argued that the trademark “Kinmen Hong Gaolian” (or “金門紅高梁” in Chinese. Kinmen refers to a chain of small offshore islands administered by the R.O.C.) also contains the words “Hong Gaolian”; the trademark, however, was allowed to register. Consequently, the rejection to TTL’s trademark application showed the inconsistency in the TIPO’s standard. The TIPO, though, explained that the condition of the registration cited by TTL is of different from that of TTL’s application. In addition, the popularity of the trademark is also taken into consideration when issuing the registration grant.

Organized and translated by Akina Pan

International Affairs