Distinctiveness is a requirement for registration of a trademark. The distinctiveness of a trademark includes inherent distinctiveness and acquired distinctiveness. Inherent distinctiveness is inherent in the trademark itself and is not acquired through use, while acquired distinctiveness refers to the situation in which a sign is not distinctive by itself, but the use of the trademark on the market makes relevant consumers recognize it as a sign identifying the source of the goods or services; in other words, it acquires distinctiveness. In addition to the original meaning, such a trademark also creates a new meaning that can identify the source.
The key issue is how to determine a trademark is distinctive enough for trademark protection.
The main function of a trademark is to identify the source of goods or services. If a sign cannot identify and distinguish goods or services, it does not have the trademark function and the registration thereof cannot be approved. Distinctiveness is a requirement for registration of a trademark. However, the existence or degree of distinctiveness of a trademark often changes with the actual use of the trademark and the passage of time. In particular, in view of today's ever-changing marketing methods and rapid development in digital media technology, the type and manner of use of a trademark change continuously, which greatly affect the determination of its distinctiveness. Whether a sign is distinctive may be determined on different basis in different cases because of the different nature of goods or services. Therefore, the results are often considered inconsistent. Likewise, the guidelines for determination of whether a trademark has acquired distinctiveness through use must vary with the strength of evidence of use, the extent to which competitors in the same trade must use the trademark and the extent to which the consumers of relevant goods or services may be in contact with the trademark.
The Examination Guidelines on Distinctiveness of Trademarks stipulated by the Intellectual Property Office are formulated to establish objective examination criteria and facilitate consistent judgments.
According to the Guidelines, market surveys may be cited to support the distinctiveness. Nonetheless, the market survey has probative value only if it is professional, impartial and objective. When the trademark applicant chooses to conduct a market survey by itself but lacks the expertise, the sampling is often not representative, the questionnaire usually contains leading questions, and the people conducting the market survey or interview often lack professional training and ability. As a result, the accuracy and impartiality of the questionnaire are likely to be challenged, which will affect the market survey's value as a reference.
The Intellectual Property Court took the market survey submitted by the trademark applicant into consideration when determining whether a 3D trademark is distinctive enough for trademark registration. After reviewing the factors of credibility of market survey companies or organizations, Survey methodology, design of questionnaires and Correlation between content and conclusion as well as the use evidence, the IP Court held that such a 3D trademark should be granted registration.