IP Court sustains distinctiveness of Chinese character mark ”推推指”
E170219Y2 | Mar. 2017（E208）
Marilyn International Co., Ltd. (“Marilyn”) filed an invalidation with the Taiwan IPO against the registration of Venus’ Secret Company Limited’s (“Venus”) three-Chinese character mark推推指 (the “mark in dispute”) on the ground that the mark in dispute is a descriptive mark, not suggestive mark and it is not distinctive, and therefore, the Taiwan IPO should invalidate its registration. The Taiwan IPO examined Marilyn’s invalidation request and decided to overrule the request. Thus, Marilyn filed an administrative appeal with the Ministry of Economic Affairs but the appeal was dismissed. Marilyn thus instituted administrative proceedings with the IP Court on the same ground, claiming that the mark in dispute is similar to another three Chinese characters combination, “推推脂” in pronunciation and appearance. Also, the two Chinese characters, “推脂” (meaning cellulite massage in Chinese language) has been commonly used in beauty industry. In view of the foregoing, Venus’s use of the mark in dispute as a trademark will affect the fair trade competition on market.
According to the IP Court judgment, consisting of three Chinese characters, “推”, “推”, and “指”, the mark in dispute is not an inherent vocabulary and one cannot consult a dictionary for its meaning. Moreover, as Chinese language is ideographic, every Chinese character has its own meaning and may carry multiple meanings, and thus combination of Chinese characters will produce different meanings due to subjective understanding, if the Chinese characters combination does not form an inherent vocabulary. In case of the two Chinese characters, “推脂” (meaning cellulite massage in Chinese language) indeed carries the meaning of “moving fat”, while the other two Chinese characters combination, “推指” may be differently interpreted as “moving fingers”. In addition, the mark in dispute, 推推指 may be interpreted as “recommending” and “moving fingers” or the first two Chinese characters may be regarded as the reduplication of the character, “推” so as to strengthen the meaning of “moving fingers”, which are different from the two Chinese characters combinations of “推指” and “推脂”.
Also as reasoned the IP Court judgment, it is the two Chinese characters combination, “推脂”, instead of “推指” or “推推指” that appears in most of the evidence produced by Marilyn, and such evidence cannot prove that the three Chinese characters combination ”推推指” has been commonly used in the beauty industry nor the mark in dispute is a representation of the quality, function, or other description of shapewear. Besides, relevant service providers will not be deemed as violators of Trademark Act and as infringers by using the three-Chinese characters combination ”推推指” to describe products, instead of as a mark. Therefore, the IP Court determined that the mark in dispute will not affect fair competition and thus overruled Marilyn’s institution of proceedings. (February 2017)