"Matsu Lao Chiu" Survived, "TRUEMESH" Sent Back for Reconsideration: Where the Evidentiary Bar for Acquired Distinctiveness Sits

Laid out on paper, both marks do little more than restate the place of origin, category or function of the goods, and the courts found them descriptive for the goods or services at issue. Yet the registration for “Matsu Lao Chiu” remained in force, while “TRUEMESH” did not win an order for immediate registration: the refusal was set aside and the Intellectual Property Office was directed to issue a new disposition.

The difference lies not in the provision but in the proof. Both cases invoked the same rescue route, the acquired distinctiveness of Article 29, Paragraph 2 of the Trademark Act: a sign that lacks distinctiveness is not caught by subparagraph 1 of Paragraph 1 if, through the applicant's use, it has become in trade a sign identifying the applicant's goods or services. What matters is not advertising expenditure alone, but a body of facts showing that consumers already perceive the term as indicating source.

This piece takes the Intellectual Property and Commercial Court's administrative judgment in 110 Xing-Shang-Su No. 29 (“Matsu Lao Chiu”) as the primary case, set against the same court's 112 Xing-Shang-Geng-Yi No. 1 (“TRUEMESH”) as the contrasting case.

Part I: The Statutory Text (excerpts)

Both cases apply the Trademark Act as amended and promulgated on 30 November 2016 and in force from 15 December 2016. As checked on 29 July 2026, these provisions remain the versions currently in force. The English below is the official translation in the Laws & Regulations Database of the ROC.

Trademark Act, Article 18 (Signs of which a trademark may consist; distinctiveness)

A trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, devices, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof.
The term “distinctiveness” used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.

Trademark Act, Article 29 (Refusal for lack of distinctiveness; acquired distinctiveness; disclaimer)

A trademark shall not be registered if it is devoid of distinctiveness in any of the following: (1) Consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services; (2) Consisting exclusively of the generic mark or term for the designated goods or services; or (3) Consisting exclusively of other signs which are devoid of any distinctiveness.
Subparagraph 1 or 3 of the preceding paragraph shall not apply if 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.
Where the reproduction of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of the trademark rights, the applicant shall state that he/she disclaims any exclusive right to such element. Such trademark without disclaimer shall not be registered.

Trademark Act, Article 31, Paragraphs 1 to 3 (Disposition of refusal; opportunities to cure before refusal)

An application for trademark registration shall be refused if it is held, after examination, that under Paragraph 1 or 3 of Article 29, Paragraph 1 or 4 of the preceding paragraph, or Paragraph 3 of Article 65, the trademark shall not be registered.
Before rendering a disposition of refusal pursuant to the preceding paragraph, a written notice stating grounds for refusal shall be given to the applicant, who may make observations on the intended refusal within the prescribed period.
Any restriction of the designated goods or services, amendment to the reproduction of a trademark which does not substantially change such trademark, division of an application for registration, or disclaimer shall be requested before the disposition of refusal is rendered.

The purpose of each element, and which element the two cases diverge on, is set out in the provision-by-provision commentary at the end.

Part II: Case Commentary

1. The Primary Case: 110 Xing-Shang-Su No. 29, “Matsu Lao Chiu”

This is an administrative action arising from a trademark opposition. Matsu Distillery Industrial Co., Ltd. applied on 5 December 2016 for the Chinese characters “馬祖老酒” (Matsu Lao Chiu) in printed vertical script, and obtained Registration No. 1851467, designated for Class 33 liquor goods. Huang Ko-wen, who runs the Lin Yi-ho Workshop, filed an opposition alleging a violation of Article 29, Paragraph 1, Subparagraph 1. The Intellectual Property Office dismissed the opposition; the administrative appeal was rejected, and the opponent brought this action. The court ordered the trademark owner to join as an independent intervener.

The opponent argued that “Matsu” is merely a geographical indication and “lao chiu” means liquor stored for many years, used by local residents for any home-brewed product; that the owner had ceased production for more than twenty years, with a channel market share below 1.5%; and that registration would let a single operator monopolize the name of a local cultural asset. The owner and the Office argued that ceasing production is not ceasing sales, that aged stock continued to circulate, and submitted a reply from the Lienchiang County Government, decades of media reports, and records of use at state banquets and a cross-strait leaders' meeting.

The court split the issue into two layers: first, whether there was inherent distinctiveness; then, whether Article 29, Paragraph 2 was satisfied.

• Procedural posture matters. This is an opposition, not a refused application. The mark had already been registered and published, and the opponent sought to overturn it. That posture shaped where the proof effort concentrated: the judgment explains, item by item, why the opponent's evidence did not displace the market facts supporting the registration.
• The method: distinctiveness turns on the relationship between mark and goods, found on objective evidence. Citing Article 18, Paragraph 2, the court held that distinctiveness should be judged by reference to the relationship between the mark and the goods, competitor use, the applicant's manner of use, and actual transactional circumstances. What matters is not who thought of the term first, but how close it sits to the goods.
• First-layer conclusion: no inherent distinctiveness. “Matsu” is the abbreviation of the Matsu Islands; “lao chiu,” per the Ministry of Education's dictionary, means liquor stored for many years and “is an ordinary and commonly seen name for a category of liquor.” The four characters convey “liquor produced in the Matsu region and stored for many years,” a description of place of origin or relevant characteristics—objectively insufficient to indicate source. The court did not accept that the term was the owner's own coinage; whether a term was coined first and whether it looks like a brand to consumers are different questions.
• A classification question that decided the case: subparagraph 1 or 2? Describing “lao chiu” as an ordinary name for a category of liquor reads close to the “generic term” of subparagraph 2. Yet the court applied subparagraph 1, reasoning that the mark as a whole conveys a description of place of origin, not simply a generic product name adopted as a mark. This was decisive: Article 29, Paragraph 2 expressly rescues only subparagraph 1 or 3—subparagraph 2 is excluded. Had this mark been classified under subparagraph 2, decades of use would not have given the owner this rescue at all.
• Answering the “monopoly of a cultural asset” objection. On the merits, locally home-brewed liquor is not itself called “Matsu Lao Chiu” by residents, and private brew may not be sold on the market, so competitors had no actual need to use the term. Institutionally, a term being listed in an official inventory of local specialty industries does not mean it is necessarily unregistrable descriptive wording.
• The assessment date is the date of the disposition of acceptance. Citing Supreme Administrative Court precedent, the court fixed the relevant date as 23 May 2017. Use before that date could count; figures from 2018–2021 that post-dated it could not retrospectively disprove the acquired distinctiveness found to exist on that date.
• Use measured in decades, cross-checked by third parties. The predecessor distillery's “Matsu Lao Chiu” had been on sale since 20 February 1959. The judgment lists specific newspaper reports from 1984 to 2004 covering lawful sales, department-store exhibitions, supermarket shelf placement and promotional festivals—third-party media, over decades, consistently reporting the term as this distillery's product.
• Landmark public uses strengthened the source link. The product was the state banquet liquor for a presidential inauguration in 2008 and again in 2012, and the designated liquor at a 2015 cross-strait leaders' meeting—uses that pointed the source to the owner on a nationwide stage.
• Why twenty years of halted production did not reset distinctiveness to zero. Ceasing production is not ceasing sales; aged stock continued to circulate. What this subparagraph measures is whether market perception was interrupted, not whether the production line was.
• The strongest single item: local perception obtained by official enquiry. The Lienchiang County Government replied that although residents brew their own liquor, “they do not call it Matsu Lao Chiu,” and that “by the general perception of local residents, references to Matsu Lao Chiu all point to” this distillery. That answers head-on the hardest question in proving acquired distinctiveness: whether local people themselves draw the distinction.
• Why evidence of widespread trade use fell short. The opponent's “DIY” reports were few, dated around the approval, and mostly mentioned the opponent himself—showing his own use, not others'.

The outcome: although the mark lacked inherent distinctiveness, by the date of approval it had, through long use, become in trade a sign identifying the owner's goods, so Article 29, Paragraph 1, Subparagraph 1 did not apply. The plaintiff's claim was dismissed (judgment of 18 November 2021); the opposition remained unsuccessful and the registration stood.

2. The Contrasting Case: Same Article 29, Paragraph 2 Route, So Why Did It Fail?

112 Xing-Shang-Geng-Yi No. 1, the “TRUEMESH” case (judgment of 25 January 2024) fought over the same thing. Amazon Technologies, Inc. applied for the undesigned foreign wording “TRUEMESH,” designated for Class 9 goods and several service classes, disclaiming “MESH” in the reproduction. The Office refused under Article 29, Paragraph 1, Subparagraph 1; after the Supreme Administrative Court set aside an earlier dismissal and remanded, this judgment was rendered on remand.

• Splitting the wording, still “too close to the goods.” The primary case read Chinese meaning directly. Here, the court held that because “the meanings of the two words are not abstruse,” Taiwan consumers would readily split “TRUEMESH” into “TRUE” and “MESH,” describing genuine mesh-network coverage—a description of function for network-related goods and services.
• Territoriality: foreign registrations do not transplant. The applicant pointed to registrations in the US, Canada, the UK, Japan and elsewhere. The court replied that our Trademark Act adopts territoriality, and distinctiveness must be judged by domestic consumer perception—foreign registrations are not an argument for registration here. The primary case had no such problem: its distinctiveness rested entirely on Taiwan use.
• The most fundamental split: does the evidence prove source, or technology? In the primary case, media reports treated the term as the distillery's product. Here, reports and shopping-site copy (“Advanced TrueMesh technology,” “Powered by TrueMesh”) used “TrueMesh” to describe a technology, not to identify a source.
• A stronger house mark absorbed the source link. The same materials frequently featured the applicant's other mark “eero,” so consumers would take “eero” as the source identifier. A practical warning for house-mark architectures: treat a term as a technology name beside your house mark for years, and the accumulated source link goes to the house mark, not to that term.
• No local evidence. Much of the applicant's material was in a foreign language, with no Taiwan sales volume, turnover, market share or advertising spend—the column the primary case had filled with decades of local proof.
• A disclaimer cannot rescue a subparagraph 1 problem. Disclaiming “MESH” did not help: a disclaimer addresses a case where the whole is registrable but one element should not be monopolized; where the court finds the whole non-distinctive, giving up half of it cures nothing.

This was not, however, a total loss: for the goods and services not underlined in the original disposition, the court found the applicant's claim of distinctiveness “not without basis,” partly because the refusal notice had never specifically explained the mark's connection to each designated good or service—leaving the applicant no chance to restrict or divide the application before refusal. The administrative appeal decision and the original disposition were both set aside, and the Office was directed to render a further disposition; the applicant's request for an outright order to register was dismissed as not wholly well-founded.

Side by side: three watersheds decide these cases—whether the evidence proves source or proves technology; the depth of local use; and whether a stronger mark absorbed the source link. Territoriality and the limits of a disclaimer sit alongside them. None of these is a single decisive variable; they are weighed together.

Part III: The Statute, Provision by Provision

Article 18, Paragraph 2. Two words in this definition are easy to overlook: “relevant consumers,” meaning the actual consumers of the goods, not the general public or foreign consumers—the hook for “TRUEMESH”'s “exposure in Taiwan is unclear” finding; and “indication of source,” not “attracts attention” or “is widely known.” A term can be famous and still lack distinctiveness if consumers understand it as a kind of thing rather than a source.

Article 29, Paragraph 1, Subparagraph 1. Both marks satisfied this subparagraph by different routes: direct reading of Chinese meaning in the primary case, an extra step of splitting the English composite in the contrasting case, based on whether Taiwan consumers can read it apart—not on whether there is a space on the page.

Article 29, Paragraph 2. The provision rescues only subparagraph 1 or 3—not subparagraph 2's generic terms. Placing the two cases side by side yields four evidentiary considerations: a sufficiently substantial period of use; local evidence aimed at relevant consumers; quantified, cross-checkable data where available; and use of the sign itself in a manner that indicates source, not a technology name absorbed by a co-appearing house mark. These are weighed together, not four independent prerequisites.

Article 29, Paragraph 3 and Article 31. A disclaimer addresses “the whole is registrable, but part should not be monopolized”; it has no role where the whole is devoid of distinctiveness. Article 31 gives applicants a genuinely useful chance to cure before refusal—one reason the “TRUEMESH” disposition was set aside is that the advance notice never specifically explained the mark's connection to each designated good or service, leaving the applicant unable to decide whether to restrict or divide the application.

A closing reminder for practice: where a brand name leans descriptive, Article 29, Paragraph 2 does work, but it demands long-run market facts pointing to source. Use the sign prominently from day one, whether alone or beside a house mark; keep cross-checkable records of local sales and advertising spend; and do not treat a foreign registration as a guarantee here—under territoriality, it is at most a reference point.

Appendix: Japan's “Kuchoufuku” Case

An application in Japan for “空調服” (kuchoufuku, air-conditioned clothing) was refused as descriptive under Japan's equivalent provision. The IP High Court, in Reiwa 2 (Gyo-Ke) No. 10084, agreed the mark was descriptive but held it had acquired distinctiveness through use—functionally equivalent to Article 29, Paragraph 2 here. The applicant had asked media outlets that misused the term to correct it, and several did, evidence resembling the Lienchiang County Government's reply in the primary case: third-party material on whom the term identifies in the market.

Being rescued is not being permanently safe. In July 2026 the company urged the public on social media to switch to a generic term, raising the question of genericide risk. Article 63, Paragraph 1, Subparagraph 4 of Taiwan's Trademark Act provides a revocation mechanism where a mark has become the generic name for its goods—a second risk after registration, distinct from the registration-stage problem this piece has focused on.

The lesson on where to spend enforcement effort: ordinary consumers rarely move market vocabulary and are poor enforcement targets. Media, e-commerce platform categories, and competitors' catalogues do, and correction efforts there are both effective and documentable—keep the correspondence trail, since it can later become evidence of the owner maintaining, rather than neglecting, the mark's distinguishing capacity.