IPC court revokes trademark registration over generalness

The Taiwan Intellectual Property and Commercial Court (IPC Court) has issued a judgment, finding that the IP Office and Board of Appeals erred in maintaining the validity of the registration TSA LOCK. It therefore ordered said mark to be revoked, since it has become a generic term and devoid of distinctive character.

Article 63(1) of Taiwan’s Trademark Act states that:

the IP Office shall, ex officio or by request, revoke the registration of a trademark if such trademark has become a generic mark or term, or common shape for the designated goods or services.

However, since a registered trademark is entitled to a presumption of validity, courts are hesitant to declare that a registered trademark has become genericised, making this decision invaluable case law.

Case background

In 2015 Travel Sentry filed an application and subsequently obtained registration for TSA LOCK (reg no 1227603), under:

• Class 6 –“mental locks for luggage”;
• Class 18 – “bag packs, athletics bas, gym bags, luggage”;
• Class 20 – “non-metal locks for luggage”; and
• Class 22 – “straps for luggage”.

In 2018, Safe Skies filed a cancellation action alleging that ‘TSA lock’ had become a generic term and therefore the trademark should be revoked in respect of all the designated goods.

The IP Office decided that the registration should be revoked related to Classes 6 and 20, but remain valid for Classes 18 and 22. After the Board of Appeals upheld the office’s decision, the case was appealed to the IPC Court.

IPC Court’s opinion

Standard for determining whether a registered trademark has become generic

In this judgment, the court indicated that a trademark becomes generic when it falls into common usage – when it refers to a common name of product or service and the public no longer perceives it as being associated with a particular origin. On this score, such a trademark becomes ineligible for protection as this would grant a monopoly in the common product name and impair competition. Further, according to the Supreme Administrative Court’s precedent, the benchmark date for determining whether a registered trademark has become generic is the filing date of any cancellation action against it.

The IPC court further held that distinctiveness must be assessed by reference to:

• the goods or services in respect of which registration was sought; and
• the relevant consumers’ perception of the mark – namely, whether the “primary significance of the registered mark” has become a generic term of the goods or services.

As a registered trademark is presumed to be valid, the onus is on the party challenging the registration’s validity to establish that the trademark has been perceived by a large number of consumers as a common product name, rather than as a source identifier.

Determining genericide for TSA LOCK

Upon examination of US newspaper and magazine clippings, Linuxpilot blog extracts and letters from official US authorities, the IPC Court held that such materials were sufficient to demonstrate that the characters ‘TSA’ had been perceived by the relevant public as simply an abbreviation for the US Transportation Security Administration. Further, US Customs officers routinely screen passengers’ luggage for flight security checks and occasionally open the luggage for closer inspection when necessary. To ensure that luggage is easily accessible to them, the so-called ‘TSA lock’ is specifically designed to be used with a universal master key, which is only available to US Customs, allowing officers can open passengers’ luggage without the need to break the lock.

Based on the printouts from several websites of local famous retailers, (eg, PChome and Save & Safe), the IPC Court found that numerous local luggage manufacturers commonly use the term ‘TSA lock’ to indicate that they are equipped with a specific lock matching the universal master key used or approved by US Customs.

The IPC Court concluded that the term ‘TSA lock’ is in widespread use as a common product description – rather than as a trademark to distinguish the source of the goods. In accordance with the primary significance test, since the mark has lost its essential function (guaranteeing the origin of the marked goods), it has become generic and devoid of distinctive character. As such, the IPC Court found that the IP Office and Board of Appeals erred in dismissing the cancellation action in Classes 18 and 22, and hence ordered the office to re-issue a decision revoking the trademark registration in said classes.

Key takeaways

Trademarks that were inherently distinctive at the time of registration can be vulnerable to cancellation actions if they become generic. To prevent a trademark from doing so, it is imperative to always use the appropriate trademark symbol to apprise consumers that the term is a brand name. As a trademark can become generic through a third party’s misuse as a common product name, periodically monitoring external use of the mark and taking active measures to prevent such misuse in the marketplace is also recommended.