Introduction

The registration of a trademark, such as a company logo, normally falls under one of the following categories:

  • words only;
  • devices or symbols only; or
  • a combination of the two.

However, according to IP Court Judgment 103-Min-Zhu-Su-Zi 84 (June 8 2015) and Appeal Court Judgment 104-Min-Zhu-Shang-Yi-Zi 11 (February 4 2016), not all forms of representation should be protected by copyright. In other words, the IP Court held that with regard to trademark representations, copyright protection may apply to the device portion if appropriate, but the word portion is not subject to protection under the Copyright Act.

Decision

In this case, the plaintiff asserted that it had developed the trademark at issue, which includes the word SUNSHOW flanked by a device. The company, which sells electric generators and other related lines of products worldwide, used transliteration to create the word 'sunshow', as its pronunciation is strikingly similar to the company's name in Chinese (??, Shuangshou, meaning 'both hands'). The device of the trademark represents two hands clasped together, one over the other. The plaintiff asserted that the mark enjoyed a high level of repute in the industry, such that the defendant was highly likely to come into contact with it. The defendant was therefore accused of blatantly plagiarising the wording and the device of the mark – which was already copyrighted by the plaintiff – and applied to the Taiwan Intellectual Property Office for the registration of a trademark consisting of the same English word (sunshow) combined with an almost identical device. The application therefore constituted copyright infringement. The defendant argued that:

  • both SUNSHOW and the device lacked originality;
  • the defendant had not come into contact with the trademark; and
  • there were no substantive similarities between the defendant's trademark submitted for registration and the trademark at issue.

The first and second-instance courts both held that:

  • the word 'sunshow' was presented in a common typeface which lacked original thought or sentiment; and
  • the word held no value in terms of aesthetic appreciation and was therefore deemed inappropriate to be subject matter for protection as an artistic work.

The plaintiff also admitted that the English word 'sunshow' had originated from the transliteration of the Chinese phrase for 'both hands' and that the plaintiff had invented this new English word due to the similarity of its pronunciation to the Chinese phrase. The word 'sunshow' was therefore deemed an English slogan in nature and could not be subject to copyright protection according to Article 9(1)(3) of the Copyright Act. Therefore, the plaintiff was not entitled to hold a copyright for the word component (ie, sunshow).

However, with regard to the device of the trademark at issue, both the first and second-instance courts held that the visual representation was not a simple design, but rather a complete pictorial drawing formed by the combination of upper and lower geometric figures to depict two clasping hands, with one positioned over the other. The overall device was considered to be unique and exhibit originality, and was therefore deemed to be a creative artistic work. Further, the courts determined that the defendant's pending trademark satisfied the criteria for contact and substantive similarity. The defendant had also, by a subjective standard, negligently infringed the copyright of the said artistic work. It was therefore held that the defendant was obliged to compensate the plaintiff for damages sustained.

Comment

In determining whether the representation of a trademark is entitled to copyright protection, the IP Court appears to have adopted a principle of separate distinctions for different components – the trademark in question may be divided into word and device components and the copyrights for each are determined independently.

Further, if the wording in a trademark is presented in a common typeface and characterised as a slogan, the words and devices of that mark may be treated differently under the Copyright Act. Whether the courts will continue to adopt this principle of distinction in future rulings remains to be seen.

For further information on this topic please contact Tsung-Yuan Shen at Lee and Li Attorneys at Law by telephone (+886 2 715 3300) or email (tsungyuanshen@leeandli.com). The Lee and Li website can be accessed at www.leeandli.com.

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