經通國際智慧產權事務所

On Nov. 27, 2008, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the trademark application bearing “Pekoe & Chinese Characters & device ” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Intellectual Property Court.

The decision was made by the Court based on the following points:

1. Chinese is the official language of Taiwan, while English is the foreign language that is used most frequently by the general public in Taiwan. However, as long as the meaning of a word or a phrase can be recognized by the general consumers, such a word or a phrase, regardless of what language it is written in, is deemed known to the general consumers. The defendant argued that “Pekoe” is a word with its meaning recognizable to the general consumer, and is therefore, deemed known to the general consumers. Such an argument did not find validity to the Court because the defendant did not provide any document to support the aforementioned argument.
2. In addition, the plaintiff had conducted a survey in association with the Department of English and Foreign Languages of the National Central University of Taiwan to test if the students from the aforementioned Department were able to identify the Chinese meaning of the word “Pekoe”, which is the trademark that was being opposed to. The test result showed that almost all of the students who participated in the test had problem identifying the Chinese meaning of the word “Pekoe”. Even though the word “Pekoe” does have a corresponding Chinese meaning, “”, as shown in the English-Chinese dictionary, the aforementioned Chinese meaning could not be translated into “Pekoe” according to yahoo online Chinese-English dictionary and altavista electronic dictionary. Based on the facts above, the plaintiff argued that “Pekoe” could not be deemed known to the general consumers in Taiwan.
3. Moreover, the defendant did not provide any document to prove or explain to the Court what type of tea beverages in the market use either the English word “pekoe” or the Chinese translation of “pekoe” to reveal to the consumers their content/ingredients. Instead, the defendant only looked up the Chinese meaning of “pekoe” from the dictionary, decided that the plaintiff’s trademark featured a descriptive word to reveal the nature and/or the content/ingredients of the goods, and rejected the plaintiff’s application. Such a decision was perfunctory, and therefore, was not justified in the Court’s opinion.
4. Furthermore, prior to the plaintiff filed his application, the English word “Pekoe” had never been used alone or incorporated as part of the trademark by others as their trademark. On the other hand, “Pekoe” had been used by the plaintiff as part of the trademark for over eight years. It had become well-known to the general consumers due to the continuous promotional campaigns by the plaintiff and report by the newspaper, magazine, and other mass media. Also, the search results of “Pekoe” from the major Chinese Internet search engines were mostly related to the goods and services provided by the plaintiff. Consequently, it was not unreasonable to argue that the plaintiff had successfully created a tight bonding between the trademark, “Pekoe”, and the goods and services he provided, and that the general consumers have related the word “Pekoe” to the goods and services provided by the plaintiff. Since the plaintiff’s trademark was the only one that contained “Pekoe” in the market, the general consumers would not be confused with the source of the goods.

Organized and translated by Eunice Yang

International Affairs