In April, Taiwan donated 10 million masks to areas that were hit hard by the Covid-19 pandemic.
With the airplanes taking off with our masks and other equipment, a old discussion rose at the same time. The flag carrier that handles the deliveries, is named China Airlines 中華航空. Many people in Taiwan are concerned that this name is misleading and suggest that its name should be changed to Taiwan Airlines 台灣航空.
There are of course many angles to this issue that has to do with national security concerns and international right to flying routes, but we can look into the question of if the company China Airlines could come to own the exclusive Taiwanese trademark rights to the term “Taiwan Airlines”.
At MUSA Trademark, we always tell our clients that when planning for the future, your trademark strategy should always take the lead; make sure it is at the top of the list!
Many clients tell us that they know trademarks are important but that they don’t know how to the set up a trademark plan. The China/Taiwan Airlines question is a good example about how to walk through a trademark plan when branding your company.
Here are some questions to consider:
Should the flag carrier change the English name to Taiwan Airlines and the Chinese name to 台灣航空?
There are many angles that needs to be examined when you plan to change a name. From a trademark consultants point of view, changing the Chinese name 中華航空 to 台灣航空 Táiwān hángkōng may not be the wisest choice because 中華航空 is a famous trademark which has a very wide range of protection. That is valuable. It is not easy to acquire the recognition for a trademark to “upgrade” to a famous trademark.
It would be better to use the English name Taiwan Airlines and keep the same Chinese trademark 中華航空 and apply for trademark registration.
How about the Chinese term 台灣航空 Táiwān hángkōng?
I would suggest to also try to register this as an independent trademark. It is a good name and in the future, it could be handy for further business development, perhaps for a sub-brand.
Trademark search – is Taiwan Airlines available?
Some companies just use whatever name they like and later argue in court that they were not aware the name was already a registered trademark. But time and again, the courts have emphasized that there is an existing open database of registered trademark for business owners to check so, claiming ignorance won’t work.
You need to make sure you are not infringing on someone else’s trademark before using it or you will be risking a legal battle and later being asked to rename your brand. Trademark searches will save you lots of energy, time and money.
Let’s see what we find in the TIPO database. There is already a registered trademark owned by UNO AIR for TAIWAN AIRWAYS 台灣航空 including a logo design.
But it is not over yet, let’s look a little bit closer, there is a disclaimer note showing that Uno Air is disclaiming the trademark right to the words TAIWAN AIRWAYS 台灣航空 because they are considered lacking enough distinctiveness and therefore the term can’t be registered and owned exclusively.
A disclaimer happens when a trademark application contains both a distinctive term and a non-distinctive term; instead of rejecting the whole application for containing an unregistrable element, the examiner will request the applicant to disclaim the exclusive right to the non-distinctive term in the trademark. It is only once you add their unique image logo that they can claim any trademark rights.
Once the request is fulfilled, the application will be granted together with the disclaimer note to show that the applicant does not own an executive right to the non-distinctive term even though it is one part of their trademark.
The flag carrier CAN then use the term TAIWAN AIRLINE. But they should make sure to add more design elements to avoid any confusion with the pre-existing trademark.
For an even more aggressive approach, we would suggest filing a revocation to cancel the existing trademark. Once the pre-existing trademark has been cancelled, there is no need to worry about trademark infringement anymore.
Can they acquire exclusive trademark rights to the words Taiwan Airline 台灣航空?
Yes, it is possible to acquire trademark registration and own the terms TAIWAN AIRLINE and 台灣航空 exclusively by adapting a well-planned trademark strategy.
TIPO consider the terms TAIWAN AIRLINE and 台灣航空 to be lacking distinctiveness. Does that mean they can’t be registered? Well, there is an exception under which you can obtain the trademark protection for a non-distinctiveness term. If you can prove that after intense usage (usually after investing a lot of resources on things like advertising, news releases and such), when a consumer sees the trademark Taiwan Airline 台灣航空, they will ONLY relate these words to your company, then you can get the trademark protection. This is like when people see the number 747 and directly links it to the Boeing company’s airplane. It took years and years before Boeing could obtain trademark protection for those decidedly non-distinctive 3 numbers.
So what should the flag carrier do?
First, the flag carrier should file trademark applications for TAIWAN AIRLINE 中華航空 with a new designed image and another trademark application for 台灣航空.
They need to add a design image because according to Taiwan trademark law if the trademark only contains non-distinctiveness terms, the application would be rejected. In this case, if the flag carrier only apply for the terms TAIWAN AIRLINE 台灣航空, the applications will be rejected.
Secondly, consider filing a revocation of the existing trademark.
Third, start using the trademarks and build up the awareness and the link between the terms TAIWAN AIRLINE and 台灣航空 and the flag carrier.
With the investment of time and money, it is highly possible for the flag carrier’s trademark to create the link and acquire distinctiveness. Once the two trademarks has acquired distinctiveness, the flag carrier can obtain the exclusive right.
Setting up a trademark strategy is sometimes complicated but it is not impossible and for sure not the task on the to-do list that you should jump over if you want to build a business that lasts. If you are curious about how MUSA Trademark can help you to start defining your trademark strategy, contact us for more information.