PChome Online Inc., one of the leading internet service companies in Taiwan that provides portal access, e-commerce and telecommunication services, brought an administrative suit before the IP Court in Taiwan against the Taiwan Intellectual Property Office’s (TIPO) decision rejecting its application for the trademark “ ” (“24h SHOPPING & DEVICE” in English). In its decision issued in December 2011, the IP Court found said trademark not registrable due to the lack of both the inherent and acquired distinctiveness.

PChome Online filed an application for said mark for use on Internet shopping services in Class 35 on June 22, 2009. Said mark was considered by the TIPO as non-distinctive on the grounds that it simply conveyed the message that the applicant’s Internet shopping services were provided 24 hours a day and was incapable of identifying a specific source.

In the administrative suit, the Plaintiff argued that the entire trademark is in a stylized form and thus inherently distinctive. Additionally, said trademark is not used by competitors in connection with Internet shopping services. Further, the Plaintiff claimed that said mark has become distinctive as applied to the Plaintiff’s services through use. In this respect, the Plaintiff cited evidence of first use of the mark in January 2007, materials showing the mark used on the Plaintiff’s online shopping website and in promotional materials as well as evidence of extensive use in terms of web visit traffic, number of buyers through the applicant’s online shopping site, advertising expenses, etc.

The TIPO answered that though said trademark contains a trapezoid frame and a device element consisting of three parallel lines below the letter “h”, said device elements are not of sufficient distinctive character so the entire mark is still incapable of performing any identification function. The fact that such a trademark is not used by competitors does not necessarily mean that the mark had a distinctive character. The term “24h購物” (“24h Shopping” in English) not only implies that the Plaintiff’s online shopping services are provided 24 hour a day, but also has the meaning of 24 hour delivery services. Therefore, said mark only serves to stress that the Plaintiff’s services are remarkably convenient and prompt and is hence only an advertising term and devoid of a distinctive character. Furthermore, the use materials presented by the Plaintiff showed that its delivery services are divided into two categories, namely, the 24-hour delivery service and the non 24-hour delivery service. This showed that the subject mark was not used as a trademark and lacked trademark distinctiveness.

The IP court upheld the TIPO’s rejection decision on the following grounds:
The words “24h 購物”, which constitute the predominant part in the mark, have the meaning of “shopping for 24 hours a day”. Thus, in spite of the device elements in said mark, when confronted with said mark, consumers will still consider said mark as an indication that the online shopping services provided by the Plaintiff are 24 hour services. Therefore, said mark is descriptive of the designated services and lacks distinctiveness.

Even though said mark is not used by competitors, the fact is that online shopping services are nowadays generally offered 24 hour a day. Thus, consumers will normally consider the mark as an advertising slogan for stressing the convenience of the online shopping services instead of as a source identifier.

The proof of use submitted by the Plaintiff is not sufficient to prove that the mark has acquired a secondary meaning through extensive use: Some materials do not display the mark itself or are undated, while others only show use of the term “PChome Online 24h 購物” (“PChome Online 24h Shopping” in English) or other terms which are different from the subject mark. Further, the subject mark has been often used together with the Plaintiff’s other trademarks such as “PC home”, “PChome線上購物” (“PChome Online Shopping” in English) or “PChome Online”. Thus, the source identifying function is not performed by the subject trademark but said other trademarks of the Plaintiff.

Based on the foregoing, the subject mark has been found to lack inherent and acquired distinctiveness so the Appeal decision and the TIPO’s rejection decision have been upheld. PChome is entitled to appeal to the Taiwan Supreme Administrative Court.