15 March, 2019
The petitioner, Chou, Tzu-Nan, was a Hong Kong resident and had no relationship with Japan. He filed an application for registration of the trademark 
which comprised of the well-known Japanese place names, “Shimitsu” and “Wuji”, and was designated for use in “import and export agent; retail of tea leaves”, etc.
TIPO denied the petitioner’s application based upon Article 30-I-(8) of the Trademark Act (the “Act”), ruling that the mark at issue was likely to mislead the local public to believe that the petitioner’s services were provided from the aforesaid Japanese places.
Petitioner made an unsuccessful administrative appeal to the Ministry of Economic Affairs (“MOEA”). In addition to affirming the TIPO’s finding and ruling, the MOEA indicated that:
(1) Notwithstanding the petitioner’s disclaiming of both Chinese and Japanese characters of “Shimitsu” and “Wuji” in the mark, the consumers could view or access the whole mark that contained those disclaimed elements and formed a wrong expression or misunderstanding of the origin of the petitioner’s services; therefore the petitioner could not obtain the registration by disclaiming those characters.
(2) Even though the petitioner had demonstrated that the mark at issue was already used on a Japanese style macha dessert store operated by himself, such use of the mark on a designated service could not overcome the likelihood of confusion by the local consumers to associate the original of service with the well-known Japanese places, “Shimitsu” and “Wuji”.
More specifically, there exist no similar provisions in the afore-mentioned Article as those set forth in Article 29-II of the Act, which provides that a mark lacking inherent distinctiveness could nevertheless be registered after having acquired distinctiveness through use.
Thus, even though the petitioner did submit evidence of relevant use, he still could not successfully assert that the mark at issue had become registrable in accordance with the afore-mentioned Article.
For further information, please contact:
Kevin Wei, , Tsar & Tsai Law Firm
law@TsarTsai.com.tw
