TIPS^®  Taiwan Intellectual Property Special

China Updates

Trademark Right Through Secondary Meaning

Trademark applicants who have been rejected on the ground of descriptiveness may prove distinctiveness through secondary meaning and obtain a registration. Taiwan's patent and trademark office would approve registration if a descriptive term has acquired secondary meaning, irrespective of the Administrative Court's holding that descriptiveness and secondary meaning are two unrelated matters.

The relationship between descriptiveness and secondary meaning has been a fertile source of controversies since Taiwan adopted the new Trademark law in December of 1993. The new law introduced the concept of secondary meaning. It provides that descriptive terms, geographic terms, surnames, and words, symbols, numbers, letters, etc. used to designate a grade and style of a good are "deemed to be distinctive" if these terms or symbols have been used in trade and become identifying symbols of the applicant's goods.

However, the new law fails to specifically indicate whether such terms or symbols may become registrable upon proof of secondary meaning. The patent and trademark office, the appeal boards and the Administrative Court are divided. Contrary views have even come from the same authority or court. It has often been held that once a term is categorized as descriptive, it cannot be registered even if secondary meaning has been acquired. Nevertheless, Taiwan's patent and trademark office is willing to allow a descriptive term to be registered if secondary meaning within Taiwan has been proved.

For information on a proposed amendment with respect to the relationship between descriptiveness and secondary meaning, see "Proposed Amendments to Trademark Law", below.