The “Peng-Yu-Yan” (bears the meaning of “a feast of fish products from a Penghu, a county in Taiwan”; its pronunciation is identical to a famous Taiwanese actor Yuyan Peng) restaurant, the “Xin-Li-You-Shu” (bears the meaning of “a Villa in the Heart”; its pronunciation is identical to a Chinese four-characters idiom meaning knowing the score about something) construction project, and the “Da-Er-Wen” (bears the meaning of slapping the mosquito near one’s ears; its pronunciation is identical to the well-known naturalist Charles Robert Darwin) electric mosquito swatter...these creative “homophonic puns” can always make a deep impression on consumers and enhance their willingness to purchase goods or services, and thus using homophonic puns become a common type for trademark registration.
The most important function of a trademark is to enable the relevant consumers of the goods or services to recognize the trademark as an indication of the source of the goods or services and to distinguish the trademark from other goods or services; therefore, trademark distinctiveness is a prerequisite of a registered trademark. In addition, once a trademark is registered, the trademark owner will obtain an exclusive right in the scope of the designated goods or services. If a specific mark is necessary for the relevant competitors to describe the nature or function of the designated goods or services, such a mark will still lack trademark distinctiveness. Thus, whether a trademark possesses trademark distinctiveness has to be determined by a comprehensive consideration of the relationship between the trademark and its designated goods or services, the usage condition of the relevant competitors, as well as the use of the applicant and actual transactions manner.
According to point 4.1.1 of the “Trademark Distinctiveness Examination Guidelines” (hereinafter referred to as the “Guidelines”) issued by the Taiwan Intellectual Property Office (TIPO), a homophonic pun possesses the trademark distinctiveness provided that such a homophonic pun could make consumers a novel and unique impression differing from its original descriptive connotation, which can serve the function of indicating and distinguishing the source of goods or services. However, homophonic puns are often taken from numbers, idioms, popular phrases, or names of celebrities. A mark presented in the form of a homophonic pun may still be considered to lack trademark distinctiveness or have other non-registration grounds which will be deemed as an obstacle to being registered, if its specific meaning describes the quality, usage, materials, origin, or related characteristics of the designated goods or services, or is a slogan for promotional purposes. The following are common types of trademark refusal for the applicant to evaluate before applying a homophonic pun as a registration trademark.
Homophonic puns presented in the form of numbers
According to point 4.3 of the Guidelines, simple numbers are usually used to indicate the date of production, size, quantity, year, or model of the goods in general commercial practices, and consumers will not treat them as marks indicating and distinguishing the source of the goods. However, if the simple numbers are designed graphically or bear the meaning of implying the quality, function, or other characteristics of designated goods or services to make them detached from merely numerical meanings, such simple numbers will possess trademark distinctiveness. For example, “566” is a homophonic pun for “烏溜溜” (transliteration: Wu-Liu-Liu), and “烏溜溜” bears the implied meaning of “black and smooth hair after washing” when its designated goods are shampoo powder and shampoo essence, which will be deemed to possess trademark distinctiveness.
However, the TIPO held the captioned mark “59黏” ( “黏” means sticky in Chinese) is a combination of words and numbers, in which the number “59” is a homophonic pun in the Hokkien language meaning “enough”, which is a buzzword for emphasis and intention. Given that the meaning of the captioned mark is pretty sticky, and such a mark merely describes the quality, usage, or relevant characteristics of the designated goods for the consumers, the captioned mark lacks trademark distinctiveness and shall not be registered.
Homophonic puns describing the quality, usage, or relevant characteristics of the designated goods or services
According to point 4.11.2 of the Guidelines, commonly used idioms only express established concepts, and consumers usually will not immediately treat them as marks indicating the source of goods or services. However, if idioms are used in an implicit metaphor to indirectly describe the relevant characteristics of goods or services, it would possibly possess trademark distinctiveness.
The applicant of the captioned mark argued that the trademark is a homophonic pun of the idiom “量身訂做” (meaning tailor-made in Chinese) and also implies the meaning of “customer-oriented”. However, TIPO held that the word “良蔘” in the trademark means “ginseng with good quality”, and the relevant competitors also used the word “良蔘” as one of the grades to evaluate the quality of ginseng, through an internet search; the word “訂作” has the meaning of “made to order”. The captioned mark is only intended to highlight the designated goods are made from ginseng of good quality ingredients or raw materials, which merely describes the quality, materials, or related characteristics of the designated goods. In addition, the use of “良蔘” is necessary for the relevant competitors, and thus the captioned mark shall not be registered due to the violation of Subsection 1, Section 1, Article 29 of the Taiwan Trademark Act.
Homophonic puns being as a promotional slogan
According to point 4.11.1 of the Guidelines, a slogan is used to convey relevant information about goods or services, or is only used for self-promotion or for publicity purposes. Unless an applicant can provide evidence to prove that the mark has a secondary meaning, the application shall be rejected under Subsection 1 or 3, Section 1, Article 29 of the Taiwan Trademark Act.
The captioned mark “婚逃賣卵蛋” is a homophonic pun in the Hokkien language meaning “Don't throw cigarette butts away”. TIPO held that the captioned mark is only a slogan for the improvement of the environment, and such a mark could not enable relevant consumers to recognize it as the source of the designated goods, which lacks trademark distinctiveness. The applicant was also unable to provide any specific evidence to prove the secondary meaning, and thus it shall not be registered.
Homophonic puns related to names of celebrities
According to Subsection 13, Section 1, Article 13 of the Taiwan Trademark Act, “A trademark shall not be registered in any of the following: Containing another person’s portrait or a well-known name, stage name, pseudonym, or alternative name, unless the said person consents to the application.” This non-registration ground is to protect the personality rights of natural persons, and to the extent that the name or artist name is already well-known at the time of filing. Comparing the captioned mark “鍋台銘” and the famous Taiwanese entrepreneur Mr. Tai-Ming Kuo, not only do they share the same pronunciation, but also there is merely a slight difference between the first characters (鍋 and 郭). Given that Mr. Tai-Ming Kuo is a well-known public figure in Taiwan, TIPO held that the captioned mark can be easily associated with Mr. Tai-Ming Kuo, and thus such a mark shall not be registered without his consent.
The applicant has in fact argued in his opinion letter that TIPO approved several trademark applications in which celebrities’ names have been converted into homophonic puns, including registration no. 01576657 “樟中魔” (its pronunciations are identical to that of the entrepreneur Mr. Zhong-Mou Zhang, registration no. 01237701 “週潔輪” (its pronunciations are identical to that of the popstar singer Mr. Jie-Lun Chou), and registration no. 01985063 “鍋富城” (its pronunciations are identical to that of the popstar singer Mr. Fu-Cheng Kuo). However, the TIPO held that the font and meaning of the above cases are not the same as the actual names of the celebrities that consumers will not associate those trademarks with the celebrities themselves, which is very different from the captioned mark. If we take the registration no. 01985063 “鍋富城” as an example and both marks merely replace “郭” with “鍋” (sharing the same pronunciation “guo”), it is worth paying attention to that TIPO’s examination on the trademarks consisting of homophonic puns related to a name of a celebrity tends to become more stringent.
(The article is originally in Chinese which can be found here.)