Courts Rejects Trademark Registration for "LA VIE EST BELLE"

The French perfume and cosmetics company LANCOME PARFUMS ET BEAUTE & CIE(hereinafter "LANCOME") filed atrademark applicationwith the Taiwan Intellectual Property Office (TIPO) for the mark "LA VIE EST BELLE," designated for use on cosmetic goods.  After examination, TIPO held that the trademark at issue, namely "LA VIE EST BELLE," which literally means "living is wonderful; life is beautiful," is a general statement for advertisement. TIPO further reasoned that the trademark at issue cannot sufficiently allow consumers of the products to identify theproducts, and thereby to distinguish the products from the goods or services of other companies.Thus, TIPO held that the registration of the mark cannot be granted.

The case was heard by the IP Court which affirmed the decision on the following ground:

When conducting a search on Google, millions of search results are returned in response to a query involving the phrase "LA VIE EST BELLE,"including uses for advertisements of movies and music, photographs of one’s daily lives, logrecords of websites, and even web-blog names of Taiwanese individuals. Hence, the phrase "LA VIE EST BELLE"is broadly usedas a common advertising phrase or slogan, and does not possess the distinctiveness of a trademark.

Dissatisfied with this ruling, LANCOME appealedto the Supreme Administrative Court but the appeal was dismissed for failure to specify any violation or misapplication of laws in the IP Court’s decision.The verdictwas thereforefinal and LANCOME failed to register the phrase "LA VIE EST BELLE" on cosmetics.

Trend under current practice

This decision reflects relevant aspects of TIPO's Examination Guidelines on Distinctiveness of Trademarks which provides that "with the exception of a highly distinctive slogan or a sign containing such slogan, which enables consumers to immediately recognize it as a sign identifying the source, the registration of a slogan cannot be granted unless there is proof that it has acquired distinctiveness of a trademark." Moreover, it has been noted, based on observations of recent practice by TIPO, that examiners tend to rely on Internet search results when determining the distinctiveness of an applied-for trademark. If it is found from search results that a phrase or a term has been used by different parties on the relevant goods or services, or has been commonly used as an advertising slogan on different goods or services, registration as a trademark will not be granted for such a phrase or term.

In view of the recent trends in examination practice related to a determination of the distinctiveness of trademarks, we recommend trademark applicants conduct a simple search on the Internet in order to ascertain the manner in which the proposed-to-be-filed trademark is being used. By undertaking such a preliminary step, applicants would be able to better evaluate the preliminary registrability of the mark before filing the application with the TIPO.