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Y42 denied trademark by Taiwan Intellectual Property Office in classes 35 and

By James Wan

What you need to know (in a nutshell)

  1. The Taiwan Intellectual Property Office (IPO) initially refused to register the trademark Y42 in classes 35 and 42 due to lack of distinctiveness and the subsequent defence by the applicant based on the trademark’s relationship to the designated goods or services, its use of English letters and numbers, and its acquired distinctiveness through long-term and extensive use.
  2. The IPO’s decision was based on the relationship between the trademark and the designated goods or services rather than on the trademark alone. The applicant’s defence argued that Y42 did not signify the quality, characteristics or other descriptions of the designated services, and the relevant consumers would be able to recognise it as a sign to identify the source of the services.
  3. The IPO’s final decision was to grant registration to the trademark Y42 based on the arguments presented by the applicant.

Full Article

In an intriguing case, the Intellectual Property Office (IPO) initially rejected an application to register the trademark Y42 under classes 35 and 42, deeming it excessively similar to a product model, pattern, or specification of designated services. This decision was grounded in articles 18-2 and 29-1(1) and (3), stipulating that trademarks must possess sufficient distinctiveness for consumers to recognise them as indicative of the source of goods or services. Nevertheless, evaluating trademark distinctiveness encompasses many factors, such as case-specific facts and evidence, competitors’ usage within the same trade, the applicant’s intended use of the mark, and prevailing trading situations.

Upon further contemplation of the case surrounding Y42’s registration eligibility, particularly in connection with cosmetic brands like SKP – which do not typically signify characteristics – it was deduced that the relevant consumer base could discern Y42 as a unique indicator of source products without any confusion arising from similarities present among different parties’ offerings. Additionally, while Y42 does not describe any service listed under Classes 35 and 42 (data processing, computer programming, research, and development provision), extensive global usage over an extended period has endowed it with a secondary meaning and acquired distinctiveness among potential customers interacting with those domains via related channels such as e-commerce platforms.

Taking these observations into account, along with Article 29-2 of the Taiwan Trademark Act, which suggests that if a mark is extensively used and recognised as an indication, it may qualify for registration approval, the IPO ultimately conceded and granted the registration accordingly.