Has your mark acquired a secondary meaning?

01 June 2023

Has your mark acquired a secondary meaning?

Winkler Partners in Taipei once assisted a client in its application for trademark registration of a square-shaped three-dimensional mark resembling a chocolate bar. The trademark was for the client’s chocolate products.

Initially, the Taiwan Intellectual Property Office (TIPO) determined that the mark lacked inherent distinctiveness since it resembled conventional chocolate bars. According to TIPO, it was merely describing chocolate, which put its registrability into question.

The firm then presented supporting materials to bolster the mark’s registrability. These materials consisted of product packaging, TV commercials, print ads and convenience store billboards, promotions and sweepstakes, and consumer discussions on the internet. Gary Kuo, a partner at Winkler Partners in Taipei, said these were provided as “evidence to prove that consumers can recognize the source of our client’s goods through identifying the mark.”
The result was favorable: TIPO approved the registration of the square, three-dimensional chocolate-looking mark by it acquiring a “secondary meaning.” But what does secondary meaning mean in trademarks?

Under trademark law, any mark that merely describes a product acquires secondary meaning when it has taken on additional meaning after establishing a strong association with the product’s maker.

A mark that has acquired secondary meaning may be considered more distinctive than one that is descriptive and has not acquired secondary meaning. Thus, secondary meaning is a deciding factor in a mark’s eligibility for trademark protection or registration.

Secondary meaning in different jurisdictions

Under Section 123.1 of the Intellectual Property Code of the Philippines (IP Code), any word, name, symbol, device or any combination thereof can be registered as a mark except those enumerated as non-registrable marks.

“However, Section 123.2 of the IP Code provides an exception to the non-registrability of certain marks pursuant to the doctrine of secondary meaning. The doctrine allows certain signs or devices that are originally unregistrable to be given trademark protection,” said Patricia Bunye, senior partner at Cruz Marcelo & Tenefrancia in Manila.

Under Philippine case law, this doctrine applies when “a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.”

“Only the categories of non-registrable marks under Section 123.1 (j), (k) and (l) of the IP Code are eligible for protection under the doctrine of secondary meaning. These categories refer to marks that are descriptive of the goods or services, consist of shapes necessitated by technical factors, or consist of colour alone unless defined by a given form,” added Bunye.

In the decision of the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines (IPO Decision No. 2016-109), the doctrine of secondary meaning was used as one of the bases for the protection of “CHOW,” otherwise a descriptive mark, for dog food.

“Under the Singapore Trade Marks Act 1998, a trademark must be distinctive before it qualifies for registration. If a person applies to register a mark which is not inherently distinctive, that person must satisfy the registrar that the mark has acquired secondary meaning as of the date of the application. Otherwise, the mark cannot proceed to registration and enjoy protection under the Act,” said Siau Wen Lim, director of intellectual property at Drew & Napier in Singapore.

According to Lim, the quality of having acquired secondary meaning is sometimes referred to as “acquired distinctiveness” or “de facto distinctiveness.” Such is the case in Taiwan.

Kuo revealed that secondary meaning is not clearly stated or defined in Taiwan’s Trademark Act. However, in practice, this term is defined as a mark’s acquired distinctiveness that makes an initially non-distinctive mark registrable. The textual basis for a mark’s acquisition of secondary meaning is provided in Article 29 Paragraph 2 of Taiwan’s Trademark Act.

Kuo further explained: “According to Article 29 of the Act, a sign that is ‘devoid of distinctiveness’ cannot be registered because it does not carry meaning beyond its description and pure description cannot be trademarked. However, through extensive use of the mark in the course of trade, it can acquire secondary meaning, enabling related consumers to see the mark as ‘capable of distinguishing the goods or services’ and originating from a specific source. Thus, a mark with acquired secondary meaning can become registrable.”

Among the non-distinctive marks in Taiwan that have acquired secondary meaning over time is “101.” The mark designates department stores and the organization of entertainment events. It simply pertains to a number and thus lacks distinctiveness.

“However, according to the award records of the Taipei 101 building, news reports, advertising materials and event-related materials submitted by an applicant, the 101 mark has effectively separated itself from its descriptive meaning to relevant customers, by distinguishing itself to be a particular department store. Thus, it has acquired secondary meaning,” shared Kuo.

Another is “Booking.com” for hotel services. “Booking” is a description of hotel services. As a whole, the mark features a link for booking hotel accommodations, which lacks inherent distinctiveness. However, after the applicant’s extensive use and promotion, the mark has acquired a secondary meaning.

The concept of “acquired distinctiveness” is also recognized in Pakistan under Trade Marks Ordinance 2001 and in Kazakhstan under Article 6.1 of the country’s trademark law.

“The term ‘secondary meaning’ per se has not been defined or used under the local trademarks law. However, the concept of ‘acquired distinctiveness’ has been recognized – particularly in Section 14 of the Trade Marks Ordinance, which prohibits registration of inter alia descriptive and indistinctive marks, unless such marks have acquired distinctive character as a result of the use made of such marks, or otherwise qualify as well-known marks,” said Sana Shaikh Fikree, senior associate at Vellani & Vellani in Karachi.

Some marks that have acquired secondary meaning in Pakistan due to extensive use are manpasand, meaning “favourite” in the local language for edible oils; Kurkure, meaning “crisp” in the local language for snacks; and holiday inn for hotel services. 

“In Kazakhstan, it is indicated as acquired distinctiveness,” said Saule D. Kulzhambekova, a partner at Bolotov & Partners in Almaty. “The non-distinct sign may be registered as a trademark if in the result of wide and long use, it acquired a distinctiveness.”

She added: “The marks ‘RESOUND,’ ‘Crystal UHD’ in relation to TV, ‘International Skating Union’ initially have been refused and after providing evidence confirming acquired distinctiveness, these marks were registered.”

Determining the existence of secondary meaning

According to Kulzhambekova, secondary meaning is determined “in the results of wide and long use.” In Taiwan, whether a mark has acquired secondary meaning is determined by the perception of consumers, said Kuo.

The following are guidelines from TIPO, the Taiwan Intellectual Property Office, for determining whether a mark has acquired a secondary meaning:

  • The length of time the trademark has been used. The longer the time of usage, the more likely it is to acquire secondary meaning.
  • Sales volume, turnover and market share. The larger the sales volume and turnover, and the higher the market share, the more likely it is to acquire secondary meaning.
  • Advertising volume, advertising costs and promotional activities. The larger the advertising volume, the higher the advertising costs and the more promotional activities, the more likely it is to acquire secondary meaning.
  • Sales area, market distribution and sales outlets or exhibition display sites. The larger the sales area, the wider the market distribution and the more outlets and exhibition display locations, the more likely it is to garner secondary meaning.
  • Market survey reports.
  • News or media reports.
  • Certificates issued by institutions, such as chambers of commerce or trade unions, among others.

“These factors are not considered separately, but are taken into account as a whole,” said Kuo.

However, he also added that even if a mark has acquired secondary meaning, it cannot be registered if it is a generic mark or a term that competitors in the industry must use to designate their goods or services as provided in Article 29 (1)(2) of Taiwan’s Trademark Act.

“To protect fair competition in the market and prevent a single party from monopolizing the use of a mark, the Trademark Act does not allow claims for exclusive rights over a generic mark,” he said.

“To determine if a mark has acquired secondary meaning, it must be shown that by reason alone of the mark, consumers perceive the goods or services in question as emanating from a particular trader. This is typically demonstrated through significant use or promotion of the mark in the country in which the trademark owner is seeking to prove that the mark has acquired secondary meaning,” said Lim.

According to Fikree, Pakistani law doesn’t have a mechanism or criteria for determining whether a mark has taken on a secondary meaning or acquired distinctiveness. But as a matter of practice, at least three years of use of the said mark is required to determine the claim of secondary meaning and/or acquired distinctiveness. 

For a mark to assume a secondary meaning, the brand owner must also show proof of extensive use and widespread advertisements featuring the given mark. It will have to be shown that because of continuous and extensive use, “the descriptive or indistinctive nature of the said mark has been submerged, and the owner has managed to create a secondary meaning for the mark in the eyes of consumers.”

Fikree added that to prove that a mark has acquired distinctiveness, brand owners are required to file evidence composed of sales invoices, samples of promotional materials and proof of editorial coverage, among others. Courts are also likely to consider the length and manner of use of the mark and the extent/reach of promotional campaigns.

“Where marks secure registration, in breach of the provisions of Section 14 of the Trade Marks Ordinance, this may serve as a basis for an invalidation action against such mark. However, marks which have acquired a distinctive character or secondary meaning through use post registration are likely to defeat such invalidation action,” she said.

As for the IP Code of the Philippines, Bunye said: “The IP Code states that such evidence includes proof of substantially exclusive and continuous use of the mark by the applicant in commerce in the Philippines for five years before the date on which the claim of distinctiveness is made. Under the ASEAN Common Guidelines for the Substantive Examination of Trademarks, some of the kinds of evidence of distinctiveness include figures of turnover and sales of the product with the mark in the country, figures of investment in advertising the mark in the country as well as consumer and market surveys about the products or services bearing the mark.”

She added that secondary meaning usually comes into play for marks that have long been used but never registered. However, that a certain mark has acquired secondary meaning may be difficult to establish.

“The Supreme Court of the Philippines has rejected claims of secondary meaning for failure to provide such proof. For example, in the Shang Properties Realty Corporation v. St. Francis Development Corporation case, the Supreme Court ruled that the ‘St. Francis’ mark had not acquired secondary meaning as it had only ever been used with respect to the property on St. Francis Avenue and St. Francis Street, and there was no proof of substantial commercial use,” explained Bunye. “In light of this, secondary meaning should only be relied upon when there is no other choice. Businesses should aim to use inherently registrable trademarks and apply for trademark registration as soon as possible.”

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