Grace Optical Co., Ltd. (Chinese: 得恩堂眼鏡有限公司, a locally well-known eyeglasses company, hereinafter “Grace Optical”) filed an application with Taiwan IPO for registering “BOY LONDON” as a trademark (hereinafter the “proposed mark”) on February 26, 2018, but Taiwan IPO found the proposed mark “BOY LONDON” unregistrable on the ground that the proposed mark is likely to confuse consumers or to form mistaken belief with respect to the nature, quality, or place of origin. Disagreeing with the Taiwan IPO’s denial of their application, Grace Optical filed an administrative appeal with the Ministry of Economic Affairs and the appeal was dismissed as well, and therefore, Grace Optical instituted administrative proceedings with the Taiwan IP Court. The administrative proceedings were dismissed by the IP Court.
Grace Optical argued that what consumers know and are familiar with is the mark as a whole, and that the proposed mark is not “LONDON BOY”, but “BOY LONDON”, which does not carry a literal meaning to form mistaken understanding that the product under the proposed mark is from London. Besides, there have been no consumers complaining against Grace Optical’s use of the proposed mark about false or misleading labeling nor other competitors filing complaint with Taiwan Fair Trade Commission against Grace Optical over unfair competition for use of the proposed mark.
Grace Optical maintained that they are famous for the services of providing eyeglasses and prescribing and fitting eyeglasses, and have been taking a significant position on Taiwan market since their incorporation in 1965. In addition to the proposed mark, Grace Optical has duly registered its “羅密歐BOY LONDON” mark since 1991 and has been using the “BOY LONDON” mark that has been well recognized by consumers. To beat the unregistrable reason about geographical name, Grace Optical also argued that there have been other trademarks containing such words as “TOKYO”, “SEOUL”, and “Wellington”, but the products sold under these trademarks are not necessarily from Tokyo of Japan, Seoul of South Korea, and Wellington of New Zealand. It is obviously unfair for Taiwan IPO to have approved applications of the aforesaid trademarks but negated the proposed mark as a registrable one.
According to Taiwan IP Court’s reasoning, the word “London” may be used as a personal name but is not generally used as one. It is used as the name of the city London, the capital of the UK, more often than a personal name as most people think. Hence, the word “London” would mostly mean the geographic name of the city London. In this case, even though the proposed mark contains a word “boy” before “LONDON”, it would still form a misconception that the products or services under the proposed mark come from London or are related to city London, if it is observed and seen as a whole. Moreover, as to the other trademarks containing such words as “TOKYO”, “SEOUL”, and “Wellington” as indicated by Grace Optical as rebuttal, they have been approved of registration as trademarks because they are designated on different products or services. The registrability of any proposed mark should be tested and examined on a case-by-case basis and on such factors as fact, evidence, distinctiveness, likelihood of consumers’ confusion and misconcept. (August 2019)