Under Article 29.1.1 of Taiwan’s Trademark Act, a trademark cannot be registered if it lacks distinctiveness in consisting solely of terms that describe the quality, purpose, materials, origin, or other characteristics of the designated goods or services. As such, geographical names are not eligible for trademark registration if they are directly associated with the designated goods or services in the mind of the relevant consumers.
The rationale is similar to that which applies to other descriptive marks indicating other objective characteristics of the goods and services; that is, permitting one business to claim exclusive rights to a term indicating geographic origin would unfairly hinder competitors from accurately describing their products or services from the same region.
However, paragraph 2 of the same article sets forth an exception. If a trademark has, through extensive use in commerce, become a source-identifier distinguishing the applicant’s goods or services from those of other sources, the ‘geographically descriptive’ refusal shall not apply.
The Taiwan Intellectual Property and Commercial Court (the IPC Court) issued a judgment under Docket No. 113-40 in March 2025 affirming that a mark initially considered unregistrable under Article 29.1.1 may become eligible for trademark registration if it has acquired sufficient secondary meaning.
Background to the Yorkshire Tea case
In 2017, Bettys & Taylors Group Limited (Bettys & Taylors) filed an application for the mark ‘Yorkshire Tea’ in respect of goods such as teabags, herbal flower teas, fruit teas, tea sachets, and iced teas in class 30 of the Nice Classification. During the examination process, the Taiwan Intellectual Property Office (the IP Office) issued an office action tentatively rejecting the application on the ground that relevant consumers would perceive the mark ‘Yorkshire Tea’ as indicating that the designated goods originate from the Yorkshire region of England, and therefore the mark lacks inherent distinctiveness because it is geographically descriptive.
After Bettys & Taylors filed a response arguing against the non-distinctive rejection by submitting evidence of use, the mark was registered under Registration No. 2179600 upon a showing of secondary meaning under Article 29.2 of the Trademark Act.
Thereafter, Full Fill Industrial Co., Ltd. (Full Fill) filed an invalidation action in 2022 alleging that the mark ‘Yorkshire Tea’, in the mind of the relevant public, indicated the geographical origin of the goods in class 30 and thus was geographically descriptive of the designated goods. Hence, the registration of the mark ‘Yorkshire Tea’ should be revoked in accordance with Article 29.1.1 of the Trademark Act, Full Fill argued.
The IP Office found the invalidation request groundless and issued a decision dismissing the action filed by Full Fill. After the Board of Appeals upheld the IP Office’s decision, the case was appealed to the IPC Court.
The IPC Court’s opinion
While the IPC Court found that the mark consisting solely of the plain wording “Yorkshire Tea” in respect of a “teabag, herbal flower tea, [or] fruit tea” in class 30 lacks inherent distinctiveness, it also found that, as shown by evidence submitted by Bettys & Taylors, the mark ‘Yorkshire Tea’ had been continuously used since its creation in 1977 for tea products blended specifically to suit different water types in Yorkshire.
Moreover, between 1992 and 2016, articles and references relating to Yorkshire Tea-branded products had been published in various media, including on the British TV programme Heartbeat, in the print publication The Stage, on the Financial Times news website, and in the Sainsbury’s supermarket magazine.
Furthermore, between 2012 and 2017 in Taiwan, numerous consumer bloggers shared their experiences of purchasing or drinking Yorkshire Tea at Louisa Coffee, a well-known Taiwanese coffeehouse chain. Yorkshire Tea-branded products have also been available for purchasing on online shopping platforms that are popular among local consumers, such as Rakuten, PChome, and momo.
Additionally, from 1998 to 2017, Bettys & Taylors sold its branded products globally through various distributors in countries such as the US, Australia, the UK, Canada, Japan, Taiwan, South Korea, Hong Kong, and Singapore. The invoices issued to these distributors featured product packaging labelled “Yorkshire Tea” or included “Yorkshire Tea” in the product description section.
In view of the foregoing, the IPC Court concluded that, at the time of filing, the mark ‘Yorkshire Tea’ had become a source-identifier for Bettys & Taylors’s products in the course of trade as a result of its extensive use domestically and internationally. Accordingly, the IPC Court affirmed that the mark ‘Yorkshire Tea’ shall be eligible for trademark registration under Article 29.2 of the Trademark Act and thus dismissed the administrative litigation filed by Full Fill.
Key takeaways on registering geographic names as trademarks in Taiwan
While Article 29.1.1 of the Trademark Act bars registration of a mark that is geographically descriptive of the applicant’s goods, successful registration may still be achievable – albeit with considerable difficulty.
First, under local practice, a geographically descriptive refusal may be raised if the geographic name is reasonably understood by local consumers to indicate the origin of the goods or services concerned. Therefore, if the geographic meaning of the mark is obscure or remote, it may be possible to argue that the statutory refusal shall not apply.
Second, the applicant may seek to establish that the mark has acquired secondary meaning through extensive use and thus warrants trademark protection. Based on this firm’s experience, in order to enhance the chance of success in overcoming a geographically descriptive refusal, it is crucial to develop an effective response strategy tailored to each individual case and to thoroughly collect evidence of use in advance, with careful attention paid to the quantity, duration, and nature of the materials submitted.
