Recently there have been some disputes over the trademark registration of “blue tear” in Taiwan. The “blue tear (blue tears)” or “藍眼淚” in Chinese refers to a natural phenomenon of blue sparkling at the coastline of sea. It is caused by the bio-luminescent algae which give the sea a blue glow.
Such amazing blue water scene was featured in the 2013 Oscars-winning movie Life of Pi (based on a novel by Yann Martel, a Canadian author who won Man Booker Prize in 2002, and directed by Ang Lee, an internationally renowned director from Taiwan, who shot the film scenes mostly in Taiwan), and could be seen around the coastal beaches of Maldives, Caribbean, etc. The Matsu Islands, which falls under the jurisdiction of the Republic of China (Taiwan) and are about 100 nautical miles northwest from Taiwan main island, have also been recognized by locals and foreign travelers to have the most beautiful blue waters of glowing algae in the nearby water areas. Initially there was a “藍眼淚 (blue tear)” trademark application filed by a local person from Matsu in 2014 which designated goods in Class 30 (tea, pastry, etc.), followed by applications of other applicants in Class 3 (cosmetic, etc.), Class 21 (glass article and decoration) and Class 32 (beer, cocktail, etc.) from 2015 to 2016.
Currently there are two registered trademarks published in 2015 and 2016, respectively, yet the first right owner from Matsu then proposed to assign and sell the trademark online, which raised concerns after being reported by news media. Since the public questioned the trademark registrability of blue tears, Taiwan Intellectual Property Office (TIPO) posted on March 24, 2017 an explanation of this issue onto its website.
TIPO firstly explained that “blue tear (blue tears)” is an illuminous phenomenon from marine life and commonly seen around the coastal area of Matsu, Kenting, Hualien and outer islands of Taiwan, and in order to decide whether the “blue tear” meets the requirement of trademark registration, it will take into consideration whether the “blue tear’ trademark application merely conveys the impression on the quality, use, place of manufacturing/production, place of origin, etc. of the goods or services to the consumer. Namely, if the “blue tear” trademark application indicates only the meaning of describing the goods or services, the consumer generally would not consider the trademark as a brand when purchasing goods, hence said trademark could not be registered due to its lack of distinctiveness.
TIPO further explained that the already registered “藍眼淚 (blue tear)” trademark does not indicate the meaning of its designated goods of tea, pastry, etc., so that said trademark possesses distinctiveness, moreover TIPO did not find any other reasons not to allow its registration. However, TIPO pointed out said “blue tear” trademark registration does not imply that the term “藍眼淚 (blue tear)” could not be used in other commercial activities by others because fair use by a third party is permissible under Article 36, Paragraph 1 of Trademark Act. TIPO finally gave some examples for the local B&B home stay agency and the local county of Matsu as how to fairly use the term in order to promote the local tourism. Accordingly there are now several pending trademark applications of “馬祖藍眼淚” (which means “Matsu blue tear”) filed by Matsu county government in 2017. It is anticipated that the trademark registration of these applications will serve as a brand for Matsu to boast its tourism industry.
