The Intellectual Property and Commercial Court recently issued a judgment (No. 115-Xing-Shang-Su-4), upholding a refusal by the Taiwan Intellectual Property Office (hereinafter “TIPO”) to register “採購大夫” (“Procurement Doctor” in Chinese characters) as a trademark for legal services. The central issue was whether “採購大夫” constitutes a “descriptive mark” that directly describes the characteristics of legal services, or a “suggestive mark” that requires consumers’ imagination to comprehend. Where that line is drawn affects not only this application, but also the scope for creativity available to trademark applicants more generally.
I. Background
The plaintiff applied to register “採購大夫” (“Procurement Doctor” in Chinese characters) (hereinafter the “Applied-for Mark”) for various services in Class 45, including legal services, intellectual property-related services, and legal advice on tendering. However, TIPO rejected the application under Article 29(1)1 of the Trademark Act, finding that the Applied-for Mark merely described the quality, nature, or relevant characteristics of the designated services and therefore lacked distinctiveness.
II. The Parties’ Arguments and the Court’s Decision
The Plaintiff’s Arguments
The plaintiff argued that the Applied-for Mark was inherently distinctive because the plaintiff had coined it and it had neither appeared previously in published materials nor been used by other industry participants. The plaintiff emphasized that consumers could not immediately grasp the meaning of “採購大夫” (“Procurement Doctor”), as the meaning of “採購” (procurement) in this context was ambiguous and there was no inherent connection between “採購” (procurement) and “大夫” (doctor). Although the two terms, “採購” and “大夫,” might each be common, their combination was an original creation and should qualify as inherently distinctive.
The plaintiff further argued that, through longstanding business operations, advertising, and promotional activities, the Applied-for Mark had acquired distinctiveness, as relevant consumers had come to recognize it as identifying the plaintiff as the source of the services.
TIPO’s Arguments
TIPO took the view that “大夫” (“doctor” in Chinese characters) in the Applied-for Mark conveyed either a “physician” or a respectful title for a professional. It considered “採購” (“procurement”), meaning the selection and purchase of goods or services, to be descriptive and lacking in distinctiveness. Viewed as a whole, TIPO maintained, the Applied-for Mark would be understood as referring to legal services provided by a professional with expertise in procurement and would therefore directly describe the quality, nature, or other relevant characteristics of the designated services. TIPO further argued that the evidence on record was insufficient to establish that the Applied-for Mark had acquired distinctiveness through extensive marketing over a prolonged period.
The Court’s Decision
On the issue of inherent distinctiveness, the court found that the overall impression of the Applied-for Mark was that of “legal services provided by a professional with procurement expertise,” constituting a description of the designated services. The court emphasized that relevant consumers would need virtually no imagination or thought to understand the services represented by the mark, and therefore found the mark lacking in inherent distinctiveness.
The court noted that although the plaintiff established the “採購大夫” website, a domain name does not necessarily function as a source identifier for goods or services. Moreover, the website’s header displayed “採購大夫 | 政府採購專家” (Procurement Doctor | Government Procurement Expert) and “專治政府標案之疑難雜症！” (Specializing in curing the intractable problems of government tenders!), which would still lead relevant consumers to perceive the Applied-for Mark as a claim of procurement expertise. On the issue of acquired distinctiveness, the court likewise found that the plaintiff had failed to demonstrate that the Applied-for Mark had acquired distinctiveness.
III. Our Analysis
Distinctiveness and the Definition of “Suggestive Marks”
The core function of a trademark is to identify the source of goods or services. A mark is distinctive if relevant consumers can recognize it as indicating that source and distinguish the goods or services from those of others. Article 29(1)1 of the Trademark Act provides that a mark lacks distinctiveness if it merely describes the quality, intended purpose, raw materials, place of origin, or other characteristics of the designated goods or services.
Trademark distinctiveness can be viewed as a spectrum. Under TIPO’s Examination Guidelines on Trademark Distinctiveness (the “Guidelines”), inherently distinctive marks fall into three categories, listed in descending order of distinctiveness: fanciful, arbitrary, and suggestive marks.
A fanciful mark consists of a coined term with no pre-existing meaning, such as “GOOGLE” for search engine services.
An arbitrary mark uses an existing word or concept that bears no relationship to the designated goods or services, such as “APPLE” for computer products.
A suggestive mark uses indirect language or metaphor to evoke the quality, function, or other characteristics of goods or services. Although such marks may be easier for consumers to remember, they are not terms that competitors need or customarily use to describe their own goods or services. Unlike directly descriptive terms, suggestive marks typically involve a degree of creativity and require consumers to exercise imagination, thought, perception, or reasoning to understand their connection with the goods or services.
The Guidelines provide several examples of registered suggestive marks, including “一匙靈” (“One Spoon Wonder”) for laundry detergent and “足爽” (“Foot Comfort”) for athlete’s foot ointment. These marks invite consumers to make mental associations, such as imagining a detergent that works wonders with just one spoonful or an ointment that leaves feet feeling refreshed, to understand the ideas they suggest and appreciate their creative wording.
One of the key factors in distinguishing descriptive from suggestive marks is the degree of imagination or thought consumers must exercise to connect the mark with the characteristics of the goods or services. A descriptive mark conveys those characteristics directly, whereas a suggestive mark requires consumers to make a mental association. Another important factor is the extent to which competitors are likely to need the term to describe their own goods or services. The more directly and obviously a mark describes the goods or services, the greater the likelihood that competitors will need to use the same wording, and the more likely the mark is to be considered descriptive.
Is “採購大夫” (“Procurement Doctor” in Chinese characters) a Distinctive Suggestive Mark?
The court found that when the term “採購大夫” (“Procurement Doctor” in Chinese characters) are used in connection with legal services, relevant consumers require virtually no imagination or thought to directly comprehend their meaning. However, we believe this determination merits further discussion.
Since the four-character combination “採購大夫 (Procurement Doctor in Chinese characters) is not a pre-existing common expression, an ordinary consumer encountering it might immediately wonder: What is “採購大夫 (procurement doctor)”? What does it mean to pair “採購” (procurement) with “大夫” (doctor)? To understand the expression as referring to a professional who handles legal matters involving government procurement, the consumer must first interpret “doctor” metaphorically as an expert outside the medical field, then understand “procurement” as a reference to government procurement law, and finally connect the two concepts. This cognitive process is precisely a manifestation of “consumers needing to exercise a certain degree of imagination, thought, perception, or reasoning.”
Furthermore, lawyers and legal advisers are not ordinarily referred to as “doctors” in the legal services market. Consumers generally understand the term “大夫” to mean a medical doctor. By deliberately drawing on the image of a medical specialist, “採購大夫 (Procurement Doctor in Chinese characters)” suggests expertise in handling complex procurement-related legal issues and evokes the reassurance a patient might feel when receiving medical care. This kind of metaphor linking two distinct professions is characteristic of a suggestive mark.
Moreover, from the perspective of competitors, there are numerous more direct means to describe their procurement law expertise, such as “採購法律師 (Procurement Law Attorney)” or “專精於採購問題” (Specializing in Procurement Matters), without needing to use the inventive term “採購大夫 (Procurement Doctor in Chinese characters).” Accordingly, registering the Applied-for Mark would in no way impede or unduly restrict other legal service providers from describing their own services.
Taiwan’s Trademark Practice Could Allow Greater Room for Suggestive Marks
In our view, trademark examination practice has, at times, drawn the line for “descriptiveness” relatively broadly, causing marks that require a certain degree of consumer association to also be categorized as descriptive, leaving less room for suggestive marks.
The trademark system aims to encourage businesses to build brands, help consumers distinguish the sources of goods and services, and maintain fair competition and an orderly marketplace. Where there is no evidence that industry participants customarily use a particular term to describe the characteristics of goods or services, allowing its registration as a trademark would not, in itself, restrict competitors’ use of genuinely descriptive terms or cause consumer confusion. The registration of such marks would therefore not, in itself, give rise to unfair competition.
We hope that, when assessing whether a term is descriptive, the examination will adhere more closely to the Guidelines’ requirement that the description be “direct” and “obvious.” Where competitors’ legitimate need to use the term would not be adversely affected, allowing greater room for suggestive marks would enable applicants to build their brands in more creative and varied ways. We believe this approach would foster a more diverse marketplace and better serve the purposes of the Trademark Act.
This article was co-authored by Partner Gary Kuo, Attorney Yi-Kai Chen, and Researcher Yu-Hsi Chen.
If you would like to know more about the laws and regulations or related matters discussed in this article, please feel free to contact our firm at gkuo@winklerpartners.com or ychen@winklerpartners.com.
27 October 2026
[Trademark Information]
Application No. 112023246
