In a recent trademark distinctiveness decision, the IP Court held the trademark “TRIPLE HEALTH GUARD” as inherently distinctive.

Mead Johnson filed an application for the mark “TRIPLE HEALTH GUARD” for use on milk and milk products, milk powders, etc. in Class 29 with the TIPO on December 18, 2008. Though a disclaimer of the word “HEALTH” had been entered, the TIPO considered the entire trademark as a generic common description of the function of the goods and rejected the application in accordance with Article 23-I-2 of the Trademark Act.

After an unsuccessful Administrative Appeal, Mead Johnson (Plaintiff) lodged an Administrative Suit against the TIPO’s rejection decision. The Plaintiff argued that the mark had an inherently distinctive character and was, at most, suggestive. Most of the search results for the keywords “TRIPLE HEALTH GUARD” on the Google search engine were directed to the Plaintiff. Further, said mark had acquired distinctiveness through use. Additionally, said mark had been registered in the USA and the Philippines, which proved that said mark was deemed distinctive in said two English-speaking countries. Further, Internet and dictionary searching did not show that said mark was a generic common term and there was no evidence indicating that said mark would be directly associated with the designated goods by general consumers.

The TIPO answered that whether a trademark was a generic common description for stressing the function of the goods should be observed based on general consumers’ understanding of the mark. Further, the evidentiary materials presented by the Plaintiff showed that the mark had been used in combination with other words such as “VITAMINS”, “PREBIOTICS”, “MINERALS”, Growth”, “Brain & Eye”, “Immune System”. From this, it was clear that the mark had been used to stress the functions of the goods. When confronted with such healthcare products emphasizing multiple functions, consumers would consider the Plaintiff’s mark as a direct description of the goods.

Based on the arguments of the two parties and the evidence presented, the IP court ruled in favor of the Plaintiff, holding that the intended combination was not a term commonly used in daily life, but was suggestive and had a distinctive character. The IP court found that if the Plaintiff’s trademark was indeed a generic, commonly used term as held by the TIPO, it would be very easy for the TIPO to present evidentiary materials therefor. However, the TIPO failed to submit any evidence to substantiate its finding. Further, the registration of the Plaintiff’s trademark in the USA and the Philippines proved that said mark had a certain degree of distinctiveness in English-speaking countries. That the words “TRIPLE HEALTH GUARD” had been exclusively used by the Plaintiff according to the Internet search results and said mark had been used by the Plaintiff in a distinctive way also supported a finding of inherent distinctiveness of the mark. Based on the foregoing, the Appeal decision and the TIPO’s rejection decision were overruled.