1. Synopsis
“Trademark Genericism,” also known as “genericide,” refers to a trademark (which usually is a famous mark) that, because of its popularity or substance, has become a generic term or synonymous for the specific goods or services. According to Subparagraph 4 of Paragraph 1 of Article 63 of the Taiwan’s Trademark Act, the Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if it has become a generic mark or term, or common shape for the designated goods or services. In other words, if a trademark has become the common name for its registered goods/services in the course of trade based on the perception of the consuming public, or the loss of distinctiveness is in consequence of acts or inactivity of the proprietor of the trademark, the registration of the trademark will be vulnerable to the revocation.
To avoid the trademark from losing its function, the trademark owner should let their manufacturers/distributors fully understand on how to use the trademark correctly and respond to the incorrect use in the market timely. Besides, it is also suggested that combining the distinctive elements with the trademark to enhance the distinctiveness of the trademark.
2. Introduction[1]
(1) Background
Travel Sentry, Inc. (hereinafter referred as “the Intervener”)” filed an application in Taiwan for the mark “TSA LOCK” of the goods “metal locks for luggage” in Class 06, “backpacks; rucksacks; bags for sports; carry-on duffel bags; traveling bags; beach bags; briefcases; handbags; suitcases; trunks [luggage]; waist bags and wallet” in Class 18, “non-metal locks for luggage” in Class 20 and “luggage straps” in Class 22 on September 2, 2005. Said mark was approved by the Taiwan Intellectual Property Office (TIPO) for registration on September 1, 2006, for which the registration number is 01227603 (hereinafter referred as “the subject mark”). Safe Skies LLC (hereinafter referred as “the Plaintiff”) filed a revocation against the subject mark on September 28, 2018 requesting that TIPO shall revoke the entire registration of the subject mark in accordance with Subparagraph 4 of Paragraph 1 of Article 63 of the Trademark Act. After examination, the TIPO partially revoked the registration of the subject mark in Classes 06 and 20 and dismissed the application of revocation in relation to the goods in Classes 18 and 22 of the subject mark. The Plaintiff was not satisfied with the decision made by the TIPO and lodged an appeal with the Petitions and Appeals Committee (the Committee). However, the Committee upheld the TIPO’s decision that “TSA LOCK” has not become a generic term of goods in Classes 18 and 22 in accordance with the evidence provided by the Intervener. Accordingly, the Plaintiff lodged an Administrative Suit before the Intellectual Property and Commercial Court (hereinafter referred as “The IPC Court”) against the Decisions made by the TIPO and the Committee.
(2) Legal issue
Since the involved parties, namely the Plaintiff and the Intervener did not file an appeal against the Revocation Decision in relation to the goods in Classes 06 and 20 of the subject mark, the TIPO’s decision for these goods has been finalized. The legal issue of this case is whether the subject mark has become a generic term in relation to the goods in Classes 18 and 22.
(3) Applicable article
Subparagraph 4 of Paragraph 1 of Article 63 of the Taiwan’s Trademark Act.
(4) Summary of the judgment
The IPC Court determined that the TIPO’S Revocation Decision as well as the Committee’s Administrative Appeal Decision in relation to the goods in Classes 18 and 22 of the Trademark Reg. No. 01227603 should be cancelled. The TIPO should make an Administrative Sanction that the registration of the Trademark Reg. No. 01227603 in relation to the goods in Classes 18 and 22 should be revoked.
The IPC Court indicated that, referring to the judgment 2015 Pan Zi No. 488 made by the Supreme Administrative Court, the criterion for determining the generalization of a trademark should depend on the primary significance of a trademark recognized by the consuming public (The doctrine is called “Primary Significance Test.”) In other words, whether a trademark has become a generic term depends on the viewpoints of consumers. With regard to the distribution of the burden of proof, in accordance with the above judgment summary, the Plaintiff who files the revocation shall bear the burden of proof. In consideration of the balance of the two parties’ interests as well as the principle of procedural economy or the effectiveness of the remedies of rights, the IPC Court further indicated that, the factual grounds of the revocation should depend on the time when filing the revocation as the factual basis.
The IPC Court concluded that based on all the existing materials provided, it is considered that “TSA LOCK” refers to locks which can be unlocked by the U.S. Customs with a master key. Since such locks have been extensively used on trunks, backpacks and luggage straps, etc. in Taiwan by different parties of the same trade, relevant consumers will associate the wording “TSA LOCK” shown on the aforesaid products with the TSA (Transportation Security Administration)-approved locks, not the trademark owned by the Intervener. It can be said that the subject mark, designated for use on the goods “backpacks; rucksacks; bags for sports; carry-on duffel bags; traveling bags; beach bags; briefcases; handbags; suitcases; trunks [luggage]; waist bags and wallet” in Class 18 and “luggage straps” in Class 22, has become a generic term because of the extensive use of parties of the same trade, whereby it loses the basic function of recognizing or identifying the source of goods. Thus, the Plaintiff’s litigation demands are reasonable and should be permitted.
3. The court’s opinions
In this case, based on the evidence provided by the Plaintiff and the Intervener during the revocation procedure and the administrative appeal procedure, “TSA” is the abbreviation of Transportation Security Administration, an agency of the United States Department of Homeland Security. Further, based on the website printouts, there are several statements indicating the luggage straps and trunks are combined with the TSA locks and such locks are the standard setting. Accordingly, it is considered that the TSA locks are usually and jointly used with trunks and luggage straps when being sold, and Taiwanese consumers can easily buy such products. Moreover, according to the Cancellation Decision made by the European Union Intellectual Property Office (EUIPO)[2], the EUIPO also considered that since TSA locks has been extensively used on trunks, when consumers buy such products, they will recognize the wording “TSA LOCK” as a product feature instead of a trademark. Therefore, since the TSA locks have been extensively used on trunks and luggage straps, when the general consumers purchase said products bearing a sign of “TSA LOCK”, they will associate the sign with the aforesaid products bearing TSA-approved locks, not the subject mark owned by the Intervener.
Though the Intervener claimed that, according to the provided evidential materials, “TSA” is not a dedicated abbreviation which refers to Transportation Security Administration and it can refer to other institutes, the IPC Court considered that not only domestic and foreign enterprises use “TSA” as an abbreviation of “Transportation Security Administration,” according to the Intervener’s Rebuttal filed on March 12, 2019, it can be considered that the Intervener realized “TSA” is an abbreviation of Transportation Security Administration, whereby the Intervener avoided to use “TSA” in the U.S.A.
Moreover, based on the statement in the aforesaid Intervener’s Rebuttal “What makes a TSA LOCK™ different from a non TSA lock,” the Intervener pays close attention to the letters in upper case or lower case when using the subject mark. The affidavits provided by the Intervener to prove “TSA LOCK” is not a generic term show different upper cases to present the subject mark, such as “TSA LOCK” and “TSA Lock,” it is hard to confirm that those letters shown on said affidavits refer to the subject mark. Thus, these affidavits cannot serve as the advantageous evidence for the Intervener.
4. Conclusion and Recommendations
According to this judgment, the IPC Court indicated that since TSA locks were usually and jointly used with trunks and luggage straps by parties of the same business, relevant consumers will deem said mark shown on said goods as the product feature not a trademark. Moreover, the Court also expressed that the Intervener did not unify the use of the uppercase/lowercase of letters in the trademark, whereby such usage causes an unfavorable determination of the trademark owner.
To prevent the trademark from losing its basic function, the proprietor of the registered trademark is suggested to take the following actions:
(1) Guiding the manufacturers/distributors on how to correctly use the trademark
According to the judgement, although the subject mark “TSA LOCK” has been actually put to use on the designated goods, when promoting the products, the manufacturers/distributors usually used the subject mark to describe the features of the products, whereby consumers will consider that “TSA LOCK” refers to the characteristics of products instead of a sign indicating the sources of goods. Accordingly, when using the registered trademark, apart from labeling the mark on the products, the trademark owner shall let the manufacturers/distributors fully understand on how to use the trademark correctly. For example:
⨀ Avoid jointly using the registered mark with the features/characteristics of the products but use the trademark together with the product name.
✕: TSA LOCK is a global security system which allows passengers to lock their luggage, while permitting security authorities to inspect them without damage.
✓: This product allows users to lock their luggage. Luggage equipped with this product will be opened by the security authorities with a master key without destroying the luggage locks or luggage.
⨀ Indicate the “®” symbol when using a registered trademark.
According to Paragraph 3 of Article 35 of the Trademark Act, a trademark may, if registered, be displayed with the words “registered trademark” or the internationally used symbol for registration (the letter R enclosed within a circle). Although using this symbol is not compulsory in Taiwan, such usage can let relevant consumers know that this is a registered mark, not only a descriptive term.
⨀ Declare the proprietor of the registered mark
Always stating the ownership of the registered mark on advertising materials. Such as: “[Trademark name] is a registered mark in Taiwan owned by [Owner’s name].”
(2) Paying close attention to the use of the trademark by the parties of the same trade or the general consumers in the market
If the proprietor finds the improper use of his trademark by consumers (e.g.), he shall take the relevant action to stop such an improper use immediately.
(3) Increasing the distinctiveness of the trademark for reducing the chance of the mark being considered a product name
The proprietor may consider combining the trademark with other inherent distinctive elements (stylized word/logo/device, etc.)
5. Reference:
[1] Taiwan Intellectual Property and Commercial Court Administrative Judgment 2021 Xing Shang Su Zi No. 2
[2] Decision of European Union Intellectual Property Office, Revocation No.: 000015107 C.
*Trademark Division of Tai E International Patent & Law Office
