Amanda Y S Liu of Saint Island International Patent & Law Offices examines the implications of an Intellectual Property and Commercial Court ruling on a dispute that brewed over the ‘Yorkshire Tea’ mark
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.
read more
