Newsletter
FOREIGN GEOGRAPHICAL NAMES REGISTRABLE AS TRADEMARKS
The issue of whether geographical names can be registered as trademarks has been highly con-tentious in practice. The key provision in this regard is Article 23 Paragraph 1 Subparagraph 11 of the amended Trademark Act, which took effect on 28 November 2003 (equivalent to Ar-ticle 37 Subparagraph 6 of the old Act). Sub-paragraph 11 provides that a trademark shall not be registered if it is likely to mislead the public as to the nature, quality, or place of origin of the designated goods or services. In most cases over recent years, the Intellectual Property Office (IPO) has refused registration of geographical names as trademarks on the grounds that their use would mislead the public as to goods' place of origin.
However, in a 2002 judgment, the Taipei High Administrative Court held that the use of "SUISSE" (the French name for Switzerland) as a trademark was not likely to mislead the Tai-wanese public as to the goods' place of origin on the ground that since foreign-language education in Taiwan was mainly in English, few people had knowledge of French; and that most consumers in Taiwan would not be aware that the word "SUISSE" referred to Switzerland, and therefore it could not be held that its use as a trademark would mislead them into believing goods were of Swiss origin.
The Taipei High Administrative Court took a similar view in a 2001 suit for invalidation of the registration of "Attique" (the Greek name for the Greek prefecture Attica). The court held that "Attique" was not familiar to the Taiwanese public as a geographical name, and its use as a trademark should therefore be acceptable.
However, the invalidation petitioner appealed to the Supreme Administrative Court, which stated in its 2003 judgment that the reference to the "place of origin" of goods in Article 37 Sub-paragraph 6 of the Trademark Act, as in force when the disputed mark was registered, was not explicitly limited to localities that produced large quantities of the type of goods concerned; that Taiwan had now acceded to the World Trade Organization, and in recent years visits by its people to Western countries had become in-creasingly popular; and that as "Attique" was the area of Greece centered on Athens, the questions of whether it was indeed a name that people in Taiwan were unaware of, and whether its use was likely to mislead consumers at large as to goods' place of origin, deserved more careful consideration. The Court set aside the trial judgment and referred the case back to the Taipei High Administrative Court, with instructions to examine these issues in detail.
The Taipei High Administrative Court stated in its 2003 judgment on the retrial of the case that Attique did not produce large quantities of the classes of goods designated in the disputed reg-istration, but that with the current fashion for tourism to Western countries, the name "At-tique" was nonetheless likely to be known to people in Taiwan, so that consumers buying goods bearing the mark were likely to do so under the mistaken impression that they were products of Greece or of Attique. Registration of "Attique" as a trademark thus violated Article 37 Subparagraph 6 of the Trademark Act as in force at of the time of registration. Accordingly, the court directly ordered the IPO to render a deci-sion upholding the invalidation action.
It would appear from the Supreme Administra-tive Court's interpretation that one cannot as-sume that geographical names in foreign lan-guages other than English will definitely be treated more favorably than those in English. Rather, an overall judgment must be made as to whether Taiwanese consumers at large are likely to be misled as to the place of origin of the goods concerned.