Sound Mark Applications Are Piling Up But Confronts Disapproval of Registration If Used in Non-Core Business Items.

　Cathay United Bank has since 2004 filed 10 applications for registering its advertising jingle singing the slogan of “Enrich your life 國泰世華銀行” as a sound mark and designated the use of the proposed mark on products and services of ten categories including financing, banking, pawnbroking, advertising, and dissemination of advertising matter, etc..  Of the ten applications, only one application is approved, 7 rejected and 2 pending in examination.  Disagreeing with the result, Cathay United Bank initiates an administrative proceeding for vacating the TIPO’s disapproval decision on the applications for registering the proposed mark in its services of advertising, dissemination of advertising matter, and online advertising on a computer network.  To justify its applications, Cathay United Bank presents domestic and foreign precedents in which “a specific sound” is approved of being used as a sound mark on the products or services other than the items of the applicant’s core business.  The Taipei High Administrative Court denies the foregoing precedents and renders a judgment against Cathay United Bank.  Cathay United Bank can appeal this case to the Supreme Administrative Court.

　Judging from the numbered musical notation and the male-voiced tune as provided in Cathay United Bank’s application, the court reasons that the proposed jingle is unable to impress people and the literary meaning of the English slogan, “Enrich your life” refers to a blessing or encouraging description in Chinese and the combination of the tune and the descriptive slogan does not operate to impressively make the consumers recognize the source of Cathay United Bank’s services.

　According to the TIPO’s opinions, approval of a proposed (sound) mark registration application is preconditioned on distinctiveness possessed by the proposed mark.  In addition, the designated use of the proposed (sound) mark on the products or services other than the applicant’s core business items should be approved on condition that the applicant actually runs the non-core business and the proposed (sound) mark is indeed used in such business items. 

　In Cathay United Bank’s case, Cathay United Bank has extensively used the slogan, “Enrich your life” and the jingle in it banking services so that the consumers are so impressed to associate the slogan and the jingle with Cathay United Bank’s banking business; therefore, the registration application for the slogan and the jingle of “Enrich your life” and its designated use in banking services are approved due to its distinctiveness.  On the contrary, the designated use of “Enrich your life” on non banking services, such as, pawnbroking, jades, real estate business, advertising, etc, will not present the distinctiveness of the slogan as much as that on banking services. In other words, the designated use of “Enrich your life” on the business items other than banking services will make the slogan “less distinctive” to be distinguished from another’s services, and thus, the other proposed applications are rejected.  (2007.07)

/CCS