Determining ‘distinctiveness’ in the OneTouch trademark cancellation case

Recently, media have reported the news of the ruling by the Trademark Review and Adjudication Board (TRAB) cancelling the trademark OneTouch, registered for many years by Johnson & Johnson for blood sugar test strips on the grounds that the sign means “touch the switch, easy to operate (one touch and that’s it)”, constituting the circumstance of consisting exclusively of a direct designation of a characteristic of the goods as specified in item (2) of the first paragraph of article 11 of the Trademark Law.

Subsequently, news unfavourable to Johnson & Johnson, i.e. that its goods face the prospect of being removed from the shelves, caused a temporary clamour. In fact, the ruling is not immediately effective, as Johnson & Johnson has the right to institute an administrative action in a court in respect of the ruling, and it has expressly indicated that it will do so, meaning that the fate of the trademark OneTouch will be finally determined in a judgment of the court. The lead author is of the opinion that the legal issue at the crux of this case is the issue of the distinctiveness of the trademark, and the outlook for the case is not necessarily as dire for Johnson & Johnson as has been portrayed in the media.

Legal provisions

Article 9 of the Trademark Law specifies that “trademarks for which registration is applied shall have distinctive characteristics and be easy to distinguish”; and article 11 specifies that the following marks may not be registered as trademarks: (1) those which consist exclusively of the generic name, depiction or model number of the goods; (2) those which consist exclusively of a direct designation of the quality, main raw materials, functions, intended purpose, weight, quantity or other characteristic of the goods; and (3) those which are lacking in distinctiveness. A sign that consists exclusively of direct designation of a characteristic of the goods may be registered as a trademark if it acquires distinctiveness through use.