Trademarks "REVOLUTION PRO", "REVOLUTION SKINCARE LONDON" and "REVOLUTION MAKEUP REVOLUTION LONDON" Obtain Registration by Successfully Overcoming IPO's Provisional Refusals

11/29/2024

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 Trademarks "REVOLUTION PRO", "" and "" designated for "cosmetics related products" in Class 3, "cosmetics containers of plastic" in Class 20 and "cosmetic utensils" in Class 21 encountered provisional refusals from Taiwan Intellectual Property Office (IPO) for the reason that the wording "REVOLUTION" contained therein is non-distinctive or descriptive to the designated goods which is incapable of making the relevant consumers recognize it as a sign identifying the source of the goods/services and lacks distinctiveness to be registered as a trademark; consequently, aforesaid three trademarks are not registrable according to the Trademark Act in Taiwan.  After filing defenses based on the following grounds, the applicant successfully obtains registration for the trademarks:

 

1.        Although it is stipulated in Taiwan Trademark Act that a trademark cannot be registered if it is not distinctive enough to be a sign identifying the source of goods/services provided, the three instances of non-distinctive and/or descriptive marks illustrated in the Article 29-I of Taiwan Trademark Act all have the word "exclusively" as listed below:

(1)  Consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services;

(2)  Consisting exclusively of the generic mark or term for the designated goods or services; or

(3)  Consisting exclusively of other signs which are devoid of any distinctiveness.

 

The reason for such stipulation is "trademark distinctiveness should be judged as a whole, therefore, even if a trademark contains a descriptive, generic mark or generic name or other non-distinctive portions, it can still be registered as a source of identification if, it does not impede said identification when viewed as a whole".  In other words, as long as there is something in any conceivable point of view that might be sufficient to enable the relevant consumer to recognize it as a mark of distinction for goods or services and to distinguish it from the goods or services of others, it is distinctive.

 

2.     Although trademarks "REVOLUTION PRO", "" and "" are word marks without graphic design or stylization, they are not the description of the quality, characteristic, function and feature of designated goods nor generic terms used in the cosmetic industry.  The three trademarks are "suggestive marks" commonly used in the course of trade, which are highly creative and inherently distinctive to allow the relevant consumers recognize it as a sign identifying the source of the goods/services and to distinguish them from the goods/services of others.

 

3.        IPO has granted for registration to several REVOLUTION formative marks designated for goods in different categories, especially the mark "SHEER REVOLUTION" which also designated for the "cosmetics products" in Class 3.  The same examination criteria should be applied to the applications of the trademarks "REVOLUTION PRO", " " and "" without bias.

 

4.        Distinctiveness is a fundamental requirement for trademark registration in most jurisdictions around the world.  Considering the marks "REVOLUTION PRO", " " and "" have obtained trademark registration/approval in English-speaking jurisdictions like US, AU, New Zealand, UK and EU without non-distinctive issue ever raised. Obviously, all said trademark authorities think the three marks are distinctive to be a trademark to distinguish the applicant's services/goods from others.

 

5.        After considering the above arguments, IPO agrees that the wording "REVOLUTION" is inherently distinctive to identify the source of the goods/services and grants the registration to the marks "REVOLUTION PRO", " " and "".