萬國法律事務所

Around four years ago, Taiwan Tsing Beer Co., LTD. has filed trademark application for the term “Taiwan Tsing Beer” for use in the category of liquor. The application has been rejected by the Taiwan Intellectual Property Office for being confusingly similar to a pre-existing trademark “Taiwan Beer” owned by Taiwan Tobacco and Liquor Corporation. Taiwan Tsing Beer Co., LTD has petitioned all along the way to the Taiwan Supreme Administrative Court, stressing that unlike the creative composition of the words “Tsing” and “Beer”, the pre-existing trademark “Taiwan Beer” is merely a geographically descriptive term. However, the Supreme Administrative Court has recently overruled the petition filed by Taiwan Tsing Beer Co., LTD. and the denial of trademark registration of “Taiwan Tsing Beer” has thus become irrevocably final.

In the process of the lawsuit, Taiwan Tsing Beer Co., LTD contested the validity of the trademark “Taiwan Beer” for being geographically descriptive. It further pointed out that were it not for the monopoly by the predecessor of Taiwan Tobacco and Liquor Corporation, Taiwan Tobacco and Wine Board, over alcoholic production and marketing in Taiwan, the application for the term “Taiwan Beer” would in no event be granted by the Taiwan Intellectual Property Office. Moreover, Taiwan Tsing Beer Co., LTD. endeavored to distinguish the partys’ design over their respective beer cans, arguing that its beer can did contain the English term “Taiwan Beer” and the graphic of “rice spike” as that of Taiwan Tobacco and Liquor Corporation did, and hence there would be no consumer confusion as to the source of the beer supplied under the mark “Taiwan Tsing Beer.”

Despite strenuous efforts being made, the Supreme Administrative Court ruled in favor of Taiwan Tobacco and Liquor Corporation, stating that “Taiwan Beer” has been a registered trademark since 1999 and has gained recognition and reputation in the market through the years. In addition, the court pointed out that the Taiwanese pronunciation of “Tsing Beer” connoted “raw beer” and hence the consumer might be mislead into thinking that beer sold under the mark “Taiwan Tsing Beer” was a type of raw beer produced or sponsored by Taiwan Tobacco and Liquor Corporation.

As the ruling made by the Supreme Administrative Court is final and binding upon the parties, the denial of trademark registration of “Taiwan Tsing Beer” has thus been confirmed and become irrevocably final.