Article 29-1(3) of the Taiwan Trademark Act provides that a trademark may not be registered if it consists merely of other non-distinctive signs. Article 29-2 of the Act provides that Article 29-1(3) shall not apply if the proposed trademark has been used by the applicant and has become an identifier of the applicant's goods or services in the course of trade. According to the examination criteria of the Taiwan Intellectual Property Office ("TIPO"), in general, consumers will not consider simple lines or decorative patterns as signs denoting and distinguishing the source of goods or services. In principle, simple lines or decorative patterns are not distinctive.
Judgments No. 106-Xing-Shang-Su-Zi-50 issued on 1 August 2018 and No. 106-Xing-Shang-Su-Zi-57 issued on 6 September 2018 by the Taiwan Intellectual Property Court ("IP Court") rule that as adidas has used TM "3-Stripes Logo" on specific positions of the external sides of jackets or trousers, i.e. " " and " ", these logos have acquired distinctiveness and shall be registered as position trademarks. The judgments also manifest the important judgment principles.
The IP Court considers that the 3-Stripes trademarks, sought to be registered by adidas, may be deemed decorative lines, but they are applied on a specific position of the external sides of jackets or trousers. As noted, the specific positon becomes an important feature of the proposed trademarks, and adidas has submitted adequate evidence certifying that the "3-Stripes" trademarks have been extensively used in connection with jackets or trousers in market for a long time. In consequence, it can be ascertained that before filing, the "3-Stripes" trademarks had made relevant consumers recognize them as source indicators of adidas' goods and had acquired distinctiveness.
The IP Court further states in the judgments that, as adidas' 3-Stripes trademarks have acquired distinctiveness and thus, enable relevant consumers to recognize them as signs denoting the source of adidas' goods, they shall be granted registration to protect adidas' rights and relevant consumers against any confusion. By doing so, it can maintain trade order and fair competition in the market. Thus, the decisions made by the TIPO and the Taiwan Ministry of Economic Affairs have been cancelled. Subsequently, the TIPO has rendered new decisions to approve the registrations of adidas' above 3-Stripes trademarks.