The U.K. company, Burberry Limited (Burberry), lodged a trademark application of “BURBERRY CHECK (Black & White)” in the middle of 2008 for use on various goods falling in International Classes 3, 9, 14, 18, 21, 24, 25 and 27. The said application was rejected on the ground of lacking distinctiveness. The applicant sought an administrative appeal and obtained a favorable decision that the case should be remanded to the Intellectual Property Office (TIPO) for a further review. TIPO then rendered a rejection for the mark being devoid of distinctiveness because evidence submitted by Burberry is not sufficient to prove that the mark has become distinctive enough after its use. After failure in the second administrative appeal, Burberry raised an administrative suit in the Intellectual Property Court (IP Court).

The aforementioned trademark application was filed in July 22, 2008 and at that time the applicable law was the Trademark Act of 2003 (the current Trademark Act has been effective since July 1, 2012). Article 23-I-1 of the Trademark Act of 2003 stipulated that: “A trademark application that fails to comply with provisions of Article 5 shall be rejected.” However, “The provisions of paragraph 2 of Article 5 shall not apply in the case where the proposed trademark has been used by the applicant and has become a distinctive identification of the goods or services provided by the applicant in the course of trade.” (Article 23-IV of the Trademark Act of 2003.) Paragraph 2, Article 5 of the Trademark Act of 2003 stipulated that:
“A trademark as defined in the preceding paragraph shall be distinctive enough for relevant consumers of the goods or services to recognize it as identification of those goods or services and to differentiate such goods or services from those offered by others.”
Based on the mentioned regulations, Burberry submitted evidence of use to support the case to show that the proposed “BURBERRY CHECK (Black & White)” mark had become distinctive through long-term use. Nevertheless, the judge in charge in the IP Court maintained the previous decisions made by the TIPO and the appeal committee by holding the following:
The subject mark with combination of vertical and horizontal lines is not inherently distinctive enough for identification of source of origin, which was not contested by the applicant. Thus, the main issue of the subject application would be whether the evidence of use provided by Burberry is sufficient to prove that the captioned mark has obtained a secondary meaning through use.

In determining whether the subject mark has obtained a secondary meaning in Taiwan, the following factors need to be examined:
The manner of use of the trademark, the length of time of such use and the use by competitors in the same trade;
Sales volume, sales figures and/or advertisement volume of the trademark;
Sales territory, market distribution, points of sale or display;
Market survey reports;
Credibility of market survey companies or organizations;
Registration certificates issued in different countries; and
Other evidence of acquired distinctiveness.

To determine whether the subject mark has obtained a secondary meaning in Taiwan, the judge held that the supporting evidence should correspond to the proposed mark that is used in Taiwan so that relevant consumers in Taiwan will recognize it as a source of origin. Through carefully examining the evidence submitted on record, the judge pointed out that some evidence items, such as sales figures, photos of specialty stores or goods, …etc., did not specifically refer to the use of the subject mark. Therefore, he concluded that such evidence is not sufficient to prove that the subject mark has been used in Taiwan for a substantive period.

Editor’s viewpoints:
To demonstrate how an intended trademark is used, supporting evidence items are relevant factors to be examined as above-mentioned. The applicant needs to make relevant consumers recognize it as a trademark by using more relevant materials or media. Thus, determination of distinctiveness acquired through use is based on the recognition of local consumers. If materials relating to foreign use are provided, they are acceptable only if relevant local consumers have knowledge of such use in the foreign country.