1. Preamble
Applying for a trademark encompassing a cross symbol can be a sensitive issue or downright prohibited in some regions due to religious factors and possible confusion with the emblem of the International Committee of the Red Cross (ICRC) and the International Federation of Red Cross and Red Crescent Societies (IFRC) or with national flags of foreign countries.
Under current regulations in Taiwan, the incorporation of a cross symbol in a trademark is not legally prohibited but still may encounter legal challenges which can lead to rejection, opposition or invalidation as well as potential infringement upon the exclusive rights associated with the red cross emblem, and thus determination of similarity between a trademark encompassing a cross symbol and the ICRC/IFRC’s red cross emblem or a national flag remains a crucial issue. This article explores this topic by examining and analyzing official examination guidelines as well as several court precedents and providing a general overview of how Taiwan’s judiciary views trademarks involving a cross symbol.
2. Relevant Regulations in Taiwan
(1) Trademark Act
According to Articles 30-I-2, 30-I-5 and 30-I-8 of the Taiwan Trademark Act, a trademark shall not be registered under any of the following situations,
- Being identical with or similar to the national flag, national emblem, national seal, military flags, military insignia, official seals, or medals of the ROC, or the state flags of foreign countries, or the armorial bearings, national seals or other state emblems of foreign countries communicated by any member of the WTO under Paragraph 3 of Article 6 of the Paris Convention;
- Being identical with or similar to the armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations or well-known domestic or foreign institutions undertaking businesses for public interests, and hence being likely to mislead the public;
- Being likely to mislead the public as to the nature, quality, or place of origin of the goods or services;
(2) Examination Guidelines for Trademarks with Cross Symbols
Aside from the Trademark Act, the Taiwan Intellectual Property Office (TIPO) released the “Examination Guidelines for Trademarks with Cross Symbols” on July 30, 2019 to provide a more comprehensive and specific standard for the examination of trademarks encompassing a cross symbol.
According to said Guidelines, the factors to be considered during the examination include the following.
I. Whether the cross device is the main distinctive part of the trademark
A cross symbol is often understood to represent medical and ambulance-related concepts by the general society and in ordinary business transaction practices. Therefore, when a trademark contains a cross symbol, the cross symbol may be considered as merely an indication of medical goods or services and lacking distinctiveness.
On the other hand, if a cross symbol is combined with other elements and the overall trademark design conveys additional meanings, it may be deemed distinctive. However, it should be noted that even if the trademark is recognized as distinctive as a whole, it should still be examined for other grounds for refusal stipulated in the Trademark Act. If there is a risk of misleading or confusing the public (as stipulated in Articles 30-I-5 and 30-I-8 of the Trademark Act), such trademark would still face a risk of a rejection, opposition or invalidation.
II. Applicability of Article 30-I-5 of the Trademark Act
Under local practices, the ICRC, the IFRC, and various national Red Cross and Red Crescent societies (collectively referred to as “Red Cross societies”) are considered “well-known public welfare organizations” under this provision. The emblem of these organizations primarily features the “white-background red cross” symbol as their main identifying characteristic. If a trademark includes a cross symbol and bears resemblance to the emblem used by the Red Cross societies, there is a possibility that the public may mistakenly associate the trademark with the goods or services provided by these well-known public welfare organizations or their representative symbols. Such confusion could lead to incorrect association and potential misconceptions among the public and thus Article 30-I-5 of the Trademark Act shall apply.
III. Applicability of Article 30-I-8 of the Trademark Act
If a trademark includes a cross, it may convey connotations of its designated goods and services being in relation to medical aid or rescue. However, if such connotations are inconsistent with the actual function or nature of the goods or services covered by the trademark, the general public may be misled about the actual goods or services covered by such trademark.
Specifically, if a trademark is designated for use in goods falling within the scope of foods, health foods, or cosmetics, which are legally prohibited from advertising medical efficacy under local practices [1], there is a risk of misleading the public about the nature or quality of the products if the cross symbol is considered to be an indication of characteristics relating to medical aid or rescue. Under such circumstances, Article 30-I-8 of the Trademark Act shall apply.
3. The Red Cross Society v. the TIPO [2]
A recent judgement by the Intellectual Property and Commercial Court centering on an invalidation decision by the TIPO is an example of the examination of a trademark encompassing a red cross symbol. At the core of this dispute was whether the registration of a trademark bearing resemblance to the Red Cross societies’ emblem is allowable if a red cross symbol is included in the disputed trademark and the disputed trademark is used for medical services.
(1) Background
Trademark No. 01977039 “
” was granted registration by the TIPO on March 16, 2019 for use on services in Class 42, including animal medical services, pet microchip implantation services, veterinary services, animal grooming, consultation services related to animal care, animal breeding, and animal grooming consultation. The plaintiff, the Red Cross Society of the Republic of China, challenged the registration of said trademark by initiating an invalidation. One of the legal grounds is Articles 30-I-5 of the Taiwan Trademark Act. The invalidation was later deemed groundless in the TIPO’s invalidation decision dated September 28, 2022 [3]. Dissatisfied with the invalidation decision, the Red Cross Society of the Republic of China filed an administrative appeal, which was rejected by the Ministry of Economic Affairs (MOEA) on January 12, 2023 [4]. Consequently, the Red Cross Society of the Republic of China instituted administrative litigation with the Intellectual Property and Commercial Court (IPC Court).
(2) Court’s Opinion
A Judgment was rendered on October 19, 2023, upholding the decisions made by the MOEA and the TIPO on the following reasons.
When a trademark includes the “white-background red cross” symbol, further assessment should determine whether, in the perception of relevant consumers, it is associated with the Red Cross. Despite the enactment of the Examination Guidelines for Trademarks with Cross Symbols, it is never specified that the inclusion of a red cross within a trademark automatically invokes Article 30-I-5 of the Trademark Act. Instead, the examination should focus on whether the use of such symbol bears resemblance to the use of the Red Cross societies’ emblem and whether there is a risk of public confusion or misconception.
In this case, both the Red Cross societies’ emblem and the disputed trademark feature a red cross symbol. However, in the case of the disputed trademark, the red cross is closely integrated with its circular design, forming an inseparable overall pattern. This pattern includes a larger proportion of a specially designed colorful cartoon animal image, as well as the Chinese and English texts “丹尼爾動物醫院” and “Daniel Animal Hospital” for consumers’ recognition and identification. The overall impression conveyed to consumers by this pattern is distinct from the symbols used by the Red Cross societies’ emblem. From the perspective of consumers with general knowledge who exercise an average level of attention during transactions, the degree of similarity between the Red Cross societies’ emblem and the disputed trademark should be extremely low and easily distinguishable.
In spite of the inclusion of the red cross in the disputed trademark, the colored cartoon animals and the text are more predominant features and they reduce the likelihood of public confusion regarding its association with the Red Cross societies’ emblem featuring a “white-background red cross.” Consequently, the disputed trademark does not meet the criteria for rejection under Article 30-I-5 of the Trademark Act.
Also, from consumers’ perception, the red cross in the disputed trademark primarily signifies that the designated services are of medical nature or are related to medical and rescue activities, which is a common symbol in the medical industry. In such cases, a red cross lacks distinctiveness and receives relatively less attention from relevant consumers. Consequently, the overall design of the disputed trademark is unlikely to create an incorrect association the Red Cross societies, nor is there a risk of public confusion or misconception.
4. AIRINESS v. the TIPO [5]
Another example is a court judgment rendered by the IPC Court which centers on the similarity between the trademark in dispute and the emblem of Switzerland.
(1) Background
Airiness Enterprise Co., Ltd. applied for registration of the trademark “
” on November 30, 2016 for goods in Class 18, including cardholders, leather straps, travel bags, cosmetic bags, key cases, camping bags, backpacks, luggage, shopping bags, handbags, wallets, and book bags. The trademark was granted by the TIPO on June 1, 2017 under registration number 01843932.
A third party filed an objection, claiming that the trademark violated Article 30-I-2 of the Trademark Act. After examination, the TIPO found that the trademark indeed violated Article 30-I-2 of the Trademark Act and issued a decision to cancel the registration [6].
Airiness Enterprise Co., Ltd. appealed the decision, but the appeal was rejected by the MOEA on July 10, 2019 [7]. Dissatisfied with the appeal decision, Airiness Enterprise Co., Ltd. initiated a lawsuit.
(2) Court’s opinion
A Judgment was rendered on March 31, 2020, upholding the decisions made by the MOEA and the TIPO for the following reasons.
The disputed trademark features a red background with a white cross in the center, in combination with the words “OVER” and “LAND” written in black. The design of the disputed trademark closely resembles the Swiss flag, which also has a white cross on a red background. Additionally, the words “OVER” and “LAND” suggest a connection to Switzerland.
In the examination of similarity, the overall impression is crucial, and the main elements of a trademark, i.e., those that create a lasting impression in consumers’ minds, play a significant role. In this case, both the disputed trademark and the Swiss flag feature a prominent and striking “white cross on a red background,” which are highly similar in appearance. Despite the inclusion of the words “OVER” and “LAND” in the disputed trademark, the main distinctive part of the disputed trademark is still the “white cross on a red background” which conveys the idea of the products originating from Switzerland. Considering the overall impression conveyed to consumers, the disputed trademark is likely to be associated with Switzerland. In this regard, Article 30-I-2 of the Trademark Act should be applied. It should also be noted that said Article does not require actual confusion caused among consumers. Hence, whether consumers have actually mistaken the disputed trademark for the Swiss flag will not affect the conclusion.
5. Conclusion
Based on local regulations and practices in Taiwan, it is not prohibited to include a cross symbol as part of a trademark. However, rejections, oppositions or invalidations may still be raised based on Articles 30-I-2, 30-I-5 and 30-I-8 of the Trademark Act if the trademark is similar to a country’s national flag or is likely to mislead the general public as to its association with the Red Cross societies.
Under the circumstances, the applicant of a trademark encompassing a cross symbol should be particularly aware of the design of the overall trademark and the manner of its use to avoid violations of aforesaid articles. According to the Examination Guidelines for Trademarks with Cross Symbols and the aforesaid judgments, the examination will be conducted based on the comprehensive image of the trademark. In this regard, including additional elements (e.g., distinctive text or images) may be a solution to pass the examination. Besides, in a case of new trademark application, under current practices, even if issues raised from Article 30-I-5 or Article 30-I-8 of the Trademark Act cannot be overcome during examination, the TIPO allows applicants to obtain registration after removing the cross device in question, as long as the overall impression conveyed by the trademark will not be significantly changed [8].
When designing the trademark for the business or before proceeding with a formal trademark application for registration in Taiwan, if a cross symbol should be a part of the trademark, it is suggested that a pre-filing assessment be conducted to avoid possible legal risks. Tai E provides pre-filing consultations for assessing the registrability of a trademark and will endeavor to ensure a smooth application for our clients.
Reference
[1] Article 28-II of the Act Governing Food Safety and Sanitation stipulates, “Foods shall not be so labeled, promoted or advertised as having medical efficacy.”
Article 14-II of the Health Food Control Act stipulates, “No labeling or advertisement of health food shall claim or refer to medical efficacy.”
Article 10-II of the Cosmetic Hygiene and Safety Act stipulates, “Cosmetics shall not be so labeled, promoted, or advertised as having medical efficacy.”.
[2] Judgment of the Intellectual Property and Commercial Court 2023 Ming Shang Us Zi No. 12 [智慧財產法院112年度民商訴字第12號判決].
[3] Invalidation Decision No. H01090089 rendered by the TIPO.
[4] Appeal Decision No. 11106310310 rendered by the MOEA.
[5] Judgment of the Intellectual Property and Commercial Court 2019 Xing Shang Su Zi No. 104 [智慧財產法院108年度行商訴字第104號判決].
[6] Opposition Decision No. G01060590 rendered by the TIPO.
[7] Appeal Decision No. 10806307440 rendered by the MOEA.
[8] Points 4.3 and 5.2 of the Examination Guidelines for Trademarks with Cross Symbols published by the TIPO.
*Trademark Division at Tai E International Patent & Law Office
