The Words “New York” Are Misleading and Cannot Be Used as a Trademark.

New World Design Center (Chinese name: 紐約家具設計中心; hereinafter “the applicant”) applied with TIPO for registering its mark composed of the Chinese characters and English letters with a device, “紐約家具設計中心NEW WORLD DESIGN CENTER” and designated use of the mark in the services of “sale/lease of real estate” and “furniture retailing”. 

According to TIPO, part of Chinese characters of the applicant’s proposed mark, “紐約” (literally means “New York”) is a city name, while the applicant is Taiwan based and located in Taiwan.  The two Chinese characters, if taken as the main distinctive part of the proposed Chinese mark, would mislead the consumers to believe that the services provided by the applicant are related to New York, and that is not the matter of fact.  Therefore, TIPO rejected the application both in the designated two classes of services.  The applicant disagreed with the decision and initiated administrative proceedings with the IP Court. 

The applicant asserted that many stores and restaurants operated in Taiwan use geographic indications in their trademarks, such as, “巴黎婚紗” (literally meaning “Paris wedding” in English), “重慶川菜館” (literally meaning “Chongqing Cuisine Restaurant”), and “橫濱輪胎” (literally means “Yokohama Tires”).  To the applicant, the use of geographic indications or city names is a common practice to promote a store’s or company’s characteristics of its services or goods and that would not cause consumers’ confusion. 

In addition, the applicant presented examples of trademarks including geographic indications or city names that have been successfully registered and approved as trademarks by TIPO, such as “紐約花藝” (literally meaning “New York Flower Design”) or “紐約牙醫” (literally meaning “New York Dentist”).  The applicant argued that it is unfair for TIPO to reject its application alone, and that the city of New York is well-known for its financial business, instead of furniture business; therefore, the applicant maintained no likelihood of confusion. 

The IP Court found the applicant’s foregoing assertions untenable and dismissed its complaint on the ground that those registered trademarks that include geographic indications or city names as presented by the applicant cannot be used as a general principle to request a conclusion favorable to the applicant; they should be examined and decided on a case-by-case basis.  This case is appealable.  (2010.10)

IP Court docket number:  (99) Xing-Shang-Su-Zi No. 116 [2010]
/CCS