ALCON could not trademark “Join The See What Happens Try On” due to lack of distinctiveness

ALCON Inc. filed trademark application for its slogan “Join The See What Happens Try On” on March 11, 2020, designated for use in contact lens, advertising and enterprise management service (Application No. 109014657). However, on December 1, 2020, Taiwan’s IP Office (“TIPO”) denied ALCON’s application, ruling that ALCON’s application is not distinctive.

According to Article 29.1.3 of Trademark Act, a trademark shall not be registered if such mark consists exclusively of other signs which are devoid of any distinctiveness. Under such circumstance, the applicant may try to prove acquired distinctiveness by showing the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant.

 

Here, TIPO opines that slogan usually is designed to attract consumer’s attention and to describe the feature or value of the provided product or service. Therefore, in general, slogan itself is not distinctive and ordinary consumers would not perceive slogan as symbol representing the source of product or service. Applicant will have to submit evidence to prove the slogan has gained secondary meaning.

 

TIPO then examines ALCON’s use of “Join The See What Happens Try On” on its website. TIPO finds that in the context of ALCON’s webpage (see below), when seeing the slogan “Join The See What Happens Try On”, consumer would perceive the slogan as invitation to join the user community and share the user’s experience about the use of contact lens. Thus, TIPO considers ALCON’s evidence is insufficient to prove the mark has acquired secondary meaning.

                              (https://precision.myalcon.com/)

Additionally, in ALCON’s webpage, TIPO finds the slogan is placed in the upper portion and displayed in smaller font. When seeing the content of the webpage, consumers will be more likely to perceive “PRECISION1®” as trademark, instead of the slogan. Aside from webpage, there is no other supporting material, such as budget and volume of advertising, market share, and revenue, to illustrate how ALCON’s “Join The See What Happens Try On” has been used or recognized as a trademark. Thus, TIPO determines that ALCON fails to meet the requirement for proving secondary meaning, and denies its application accordingly.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cUFQSG1YeWRzS0lNNmtrRmxicVM5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true