Amazon Technologies loses out on distinction between suggestive or descriptive

While the line between suggestive marks and descriptive marks is theoretically clear, determining precisely where it falls is far more challenging. A mark that an applicant deems suggestive may appear descriptive to the examiner – so what criteria do examiners consider in real cases? The Taiwan IP and Commercial Court has revisited this issue in Amazon Technologies Inc v TIPO (109 Xing-Shang-Su 106, IPCC, March 2021) to provide clearer guidance on the issue.

Distinctiveness is a pre-requisite for a trademark registration. Generally, trademarks can be classified into three categories:

• fanciful or arbitrary marks (most distinctive);
• suggestive marks (distinctive); and
• descriptive marks (presumed to be non-distinctive).
   

By suggesting or hinting at the nature or an attribute of the designated goods and services without directly describing them, suggestive marks are inherently distinctive and thus eligible for registration without needing to show any secondary meaning. Although they are not as strong as fanciful or arbitrary marks in terms of distinctiveness, suggestive marks are sometimes of greater value to brands as they are easier to remember, anchoring the goods and services they suggest more firmly in the consumer’s mind. On the other hand, descriptive marks are not registrable without showing a secondary meaning, since they explicitly describe the quality of the goods or services.

In a recent case, Amazon Technologies filed a trademark application for the mark TRUEMESH in respect of “WIFI mesh network goods/services”, among others, in Classes 9, 35, 38, 42 and 45 of the Nice Classification. The Taiwan Intellectual Property Office refused to register the mark on the ground that it was descriptive of the designated goods/services. After the Board of Appeals upheld the office’s decision, the case was appealed to the IP and Commercial Court.

Amazon Technologies argued that ‘truemesh’ was an invented word, namely a creative combination of two dictionary words ‘true’ and ‘mesh’, hence not directly descriptive of the function or characteristics of the designated goods or services. However, this argument did not convince the court, which held that the word mark was descriptive rather than suggestive.

The judges reasoned that despite truemesh not being an ordinary word, it simply combines two dictionary words, which were explicitly chosen to describe the characteristics of the goods on which the mark was to be used. In other words, the relevant consumers would deem that the mark simply described the qualities of the product, directly conveying the ideas that “this is a true mesh network” and “this is a true mesh Wi-Fi”. Therefore, TRUEMESH is a descriptive mark which cannot be registered due to lack of inherent distinctiveness.

Further, there was insufficient evidence demonstrating that the mark had acquired any secondary meaning through use to establish acquired distinctiveness. The evidence of use submitted showed that the plaintiff’s house mark EERO always appeared with TRUEMESH in actual use, evidencing that the latter was used merely in a descriptive sense. In this context, the relevant consumers would consider the house mark EERO, rather than TRUEMESH, to be the source identifier of the goods or services in question.

Takeaways

As this case shows, a word mark based on an invented word is still likely to be considered descriptive and without inherent distinctiveness if relevant consumers can easily understand the connection between it and the goods or services.

In contrast, if a mark is a creative combination of dictionary words that requires imagination or a creative cognitive leap on the part of the relevant consumers to comprehend the denoted feature or characteristic of the goods or services, it can qualify as a suggestive mark.

Another test courts often employ is to ask whether it would be unfair to the applicant’s competitors if the mark were allowed to proceed to registration without showing a secondary meaning (Wu v TIPO (102 Pan 526, Supreme Administrative Court August 2013)). If the answer is yes, then the mark is descriptive; if not, the mark is suggestive. The rationale is that suggestive marks are not what players in the relevant industry would commonly or necessarily choose when they wish to describe the features or attributes of their goods or services, so allowing the registration of suggestive marks without a showing of a secondary meaning will not hinder competition.