The famous Lin Hotel, located in Taichung, applied for registration of their logo in Chinese characters as “林酒店” and designated for use within the services of “Hotel, Restaurant, etc.” (Class 43) to TIPO in October 2016. However, in March 2017, it was rejected by TIPO under Article 29, Paragraph 1, Subparagraph (3), a trademark contains an element which is not distinctive.
In accordance with the Prior Notification of Rejection, the trademark is merely composed of Chinese characters “林酒店”, wherein “林” is regarded as one of over a hundred common family surnames in Chinese culture and “酒店” refers to providing accommodation and dining services by competitors in the relevant field. According to TIPO, the trademark was not capable of being recognized by consumers as an indication of the distinguishing services of one undertaking apart from those of other undertakings. Therefore, the trademark application was not approved for registration.
Is it possible to acquire registration by using a surname as a trademark? Further, which elements could acquire registration?
In general, using a surname as a trademark for goods or services usually indicates the business proprietor’s surname rather than a sign identifying the source. When other competitors use the same surname, consumers are unable to identify the source by such surname. From the perspective of competition, different competitors in the same trade have the right to use their own surname, regardless of when they enter the market. In principle, a surname as a trademark is not distinctive unless there is evidence proving it has acquired distinctiveness after trading in the market. (Taiwan Trademark Law, Article 29Ⅱ).
In the aforementioned case, in order to acquire registration, the applicant submitted substantial evidence of use, such as recommendations by celebrated websites, netizens, and blogs as well as reports by well-known newspapers, magazines and media referring to “The Lin Hotel Taichung”. Eventually, “The Lin Hotel Taichung” trademark acquired registration in November 2017.