A Single Character Apart? How Weakly Distinctive Marks Clear the Registration Bar, and How Far They Are Protected

“可麗捲” (Ke Li Juan) cannot be registered; “銷魂麵” (Xiao Hun Mian) can. Both marks are “one word plus a food name,” both were designated for Class 30, and on the distinctiveness issue this piece focuses on, both turn on Articles 18 and 29 of the Trademark Act. The results were opposite.

This piece is built around the Intellectual Property and Commercial Court's administrative judgment in 112 Xing-Shang-Su No. 53 (“Ke Li Juan,” the primary case), set against the same court's 112 Xing-Shang-Su No. 23 (“Xiao Hun Mian,” the contrasting case), with a further comparison drawn from the Chinese “Fan Shi Niu” case. All three point at one problem: wording that is weakly distinctive can encounter the same problem at different procedural stages. At the application stage, it may be blocked as a mere description of the goods. Even once registered, in infringement litigation it may command only a narrow scope of protection because part of what it is built from comes from the public domain.

The shared test across both stages is whether relevant consumers take the wording as a description of the goods or services, or as a mark indicating source.

Part I: The Statutory Text (excerpts)

The “Ke Li Juan” case applies the Trademark Act as amended and promulgated on 30 November 2016. The “Xiao Hun Mian” case, under Article 50 of the Trademark Act, is judged by the provisions in force at the time of its registration publication (1 November 2020), the same version. 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)

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.

Article 18, Paragraph 2 supplies the definition of distinctiveness. Article 29, Paragraph 1 sorts non-distinctiveness into three categories: descriptive wording (subparagraph 1), generic terms (subparagraph 2), and other non-distinctive signs (subparagraph 3). Paragraph 2 is the lifeline, but its reach matters: acquired distinctiveness through use is available only where subparagraph 1 or 3 applies—the generic terms of subparagraph 2 are excluded.

Part II: Case Commentary

1. The Primary Case: 112 Xing-Shang-Su No. 53, “Ke Li Juan”

This is an administrative action arising from refusal of a trademark application. The plaintiff applied in 2022 for the undesigned Chinese characters “可麗捲” (Ke Li Juan), designated for Class 30 goods including rice crackers, egg rolls, pastries and batter mixes. The Intellectual Property Office refused under Article 29, Paragraph 1, Subparagraphs 1 and 3; the administrative appeal was dismissed.

The plaintiff argued the term was its own coinage, that it first sold under it in December 2021, that an exact-match search returned only its own accounts, and—in the alternative—that the mark was at least suggestive. It also claimed acquired distinctiveness, citing influencer collaborations, thousands of social-media followers and likes, and selection for a design award. The Office pointed out that “可麗捲” is one character from “可麗餅” (from the French crêpe), that traders had used the term for a Hawaiian crêpe roll as early as 2011, and that the term is readily understood as a direct description of the goods.

• The starting point: does the term bring “a kind of food” or “a brand” to mind? The issue is not whether the plaintiff thought of the term first, but what a consumer understands on seeing it.
• One character from an existing food name reads as the same food. “可麗捲” is a single character apart from “可麗餅,” and “捲” itself means to roll or wrap—giving consumers the impression of a “crêpe roll.”
• The decisive evidence: others were using it this way first. As early as 2011, media, traders and consumers used “可麗捲” as a common designation for the same food as “可麗餅,” including specific examples from magazines, forums, a convenience-store chain and a food manufacturer—all predating the plaintiff's first use.
• Rejecting “I coined it”: the timeline does not fit. Public material predating the applicant showed the wording was already used by others as a name for goods of that kind.
• Rejecting “the search results all point to me”: ranking was affected by ad spend. The court, referring to the plaintiff's own advertising back-end screenshots, found the ranking reflected recent marketing spend, not consumer recognition.
• Rejecting “suggestive”: no imagination needed, no suggestion. Where consumers need no imagination to grasp the connection to the goods, the mark is descriptive, not suggestive.
• The acquired-distinctiveness evidence, rejected item by item. The court's standard: has use in the market made relevant consumers treat the sign as indicating a particular source? Here, the search ranking post-dated the application; the influencer marketing ran only about four months before filing; the follower counts and posts were “not many”; and—most decisively—the reproduction actually used in marketing was a different, longer composite mark the plaintiff had separately registered, so the court doubted whether the plaintiff had marketed using the mark applied for at all.
• The “oolong tea; tea” portion fell under subparagraph 3—and the brand's own marketing narrative cut against it. The plaintiff itself had called its goods “French-ingredient ke li juan” and marketed tea-flavoured versions with bloggers, so consumers' perception remained a tea-paired crêpe snack, not a source identifier. How a brand names and pairs its own products shapes how consumers read the wording; describing your own mark as a category or pairing over the long run can later become evidence against distinctiveness.
• A detail buried in the annexed figures. Two other marks the plaintiff had separately registered both disclaimed any right in the wording “可麗捲”—yet in this case it sought exclusive rights in that wording standalone. A disclaimer clarifies that a non-distinctive element is outside the exclusive scope of an otherwise-registrable composite mark; it does not itself supply distinctiveness.

The outcome: the mark fell under Article 29, Paragraph 1, Subparagraphs 1 and 3, and did not satisfy Paragraph 2. The plaintiff's claim was dismissed (judgment of 2 May 2024).

2. The Contrasting Case: Also “Word Plus Food Name,” So Why the Different Result?

112 Xing-Shang-Su No. 23, the “Xiao Hun Mian” case, is an administrative action from an opposition. The mark owner applied for “銷魂麵” (Xiao Hun Mian) in 2019 and registered it in 2020 for Class 30 noodle goods. A competing restaurant operator opposed under Article 29, Paragraph 1, Subparagraphs 1 and 3. The result was the reverse of the primary case: the opposition failed and registration was upheld.

• What did the word originally describe? “可麗捲” is one character from an existing food name and points to a food in itself. “銷魂” is an established term meaning “entranced, spellbound”—a state of mind, not a description of noodles.
• Is imagination required? That is the watershed between descriptive and suggestive. Consumers “need no imagination” to connect “可麗捲” to a crêpe; they need “a degree of imagination, thought or reasoning” to see “銷魂麵” as implying an entrancing dish. The primary case fell into subparagraph 1; the contrasting case kept its inherent distinctiveness.
• The strength of prior third-party use differs enormously. The primary case had a dozen or more specific instances of use predating the applicant. Here, the opponent produced only two social-media posts that predated the filing date—but both post-dated the owner's own actual use, and could not show that competitors already used the term as descriptive wording at registration.
• A film reference does not transfer. The opponent argued a famous film dish had made “銷魂” an everyday word for deliciousness. The court drew a fine line: the film's fictional dish had a different name, giving a different impression, appearance and meaning from “銷魂麵.”
• Is the use evidence aimed at the mark itself? The primary case failed partly because its actual marketing used a different reproduction. Here, the reverse: the owner had used “銷魂麵” as a dish name since 2015, opened a shop under that name in 2017, and online searches all pointed to the owner's shops—a complete, consistent record of use of the mark itself.
• A procedural lesson: issue-specific litigation. Grounds not carried forward from opposition to administrative appeal become final and cannot be revived in the subsequent administrative action.

The outcome: the plaintiff's claim was dismissed (judgment of 31 October 2023); the registration stood.

Side by side: what the word itself points to, whether consumers need imagination, and the timeline and aim of the evidence—these three points are exactly what the statutory elements below map onto.

3. A Further Comparison (China): the Scope of Protection for Weakly Distinctive Marks

Here the weak distinctiveness takes another form: “surname plus generic catering term,” drawn from a published 2025 case note of the Jingdezhen Intellectual Property Tribunal. The “Fan Shi Niu” beef-bone noodle trademark dispute concerned how wide a scope of protection a weakly distinctive mark may claim after registration. The court found the defendant's mark as a whole differed markedly from the plaintiff's in wording, pronunciation and visual effect; the shared portion, “a surname plus the generic catering term,” was weakly distinctive and partly a public resource. The claim was dismissed in full.

The point of contact with Taiwan: elements drawn from the public domain are inherently weak, and even where use has generated some reputation, the scope of protection should be defined with care. The difference is procedural position—the primary case was blocked at the registration threshold, while this case narrowed protection at the infringement stage. The same weak-distinctiveness problem can surface at either stage.

Part III: The Statute, Provision by Provision

Article 29, Paragraph 1, Subparagraphs 1 and 2. Descriptiveness and generic terms are not the same thing. Subparagraph 1 asks whether the sign is a direct and obvious description; subparagraph 2 asks whether the sign already is the generic name. Their consequences differ greatly, discussed next. Although the primary case discussed at length that consumers use “可麗捲” as a common designation, sounding much like subparagraph 2, the court applied subparagraphs 1 and 3, and this piece follows the provisions the judgment actually applied.

Article 29, Paragraph 2. Acquired distinctiveness rescues only subparagraph 1 or 3—not a generic term under subparagraph 2. Four practical points follow from the primary case's failure: the period of use should be long enough; evidence should be from or close to the filing date; data should be cross-checkable (invoices and turnover, not self-compiled tallies); and what is used must be the mark itself, not another composite reproduction that contains it.

Article 29, Paragraph 1, Subparagraph 3. This catch-all covers signs that fall outside subparagraphs 1 and 2 yet still fail to indicate source. The 12 examples in the Examination Guidelines are illustrative, not exhaustive—the “oolong tea; tea” portion of the primary case fell here even though tea itself was not described, because consumers' overall perception blocked source identification.

Article 29, Paragraph 3, the disclaimer. A disclaimer does not itself supply distinctiveness; it clarifies that a non-distinctive element within an otherwise-distinctive composite cannot be asserted exclusively on its own. Where a product name leans descriptive, folding it into a distinctive composite reproduction with a disclaimer can secure a usable right first, with acquired distinctiveness built through later use.

A closing reminder: run an honest search before filing to see whether the wording has already been used by others as a product name or description. Where a sign leans descriptive, start accumulating acquired-distinctiveness evidence from day one, and what appears on marketing materials must be the very mark applied for. Even after successful registration, keep expectations about scope realistic: where wording contains a generic name, descriptive term or common surname, a court may still confine the exclusive scope to the portion that genuinely identifies source.