Examiners at the Taiwan Intellectual Property Office (TIPO) usually issue notices of objection to applicants seeking to register 3D shapes and ask them to submit proof that these shapes have acquired secondary meaning through consistent and substantial use. However, two fresh cases suggest that this stance may be starting to soften.
According to the Taiwan Trademark Act, a trademark is a distinctive sign that consists of words, devices, symbols, colours, 3D shapes, motions, holograms and sounds, or any combination thereof.
In many cases, the 3D shape is actually the shape of the product or its packaging, but relevant consumers often do not recognise this as identifying the source of the product. They will more likely perceive the shape as the appearance or the decorative design of the product. However, without this recognition, examiners deem the shape to lack the required distinctiveness.
Recent case law
On 12 December 2017 luxury brand Cartier filed an application in Taiwan for the 3D shape shown below (‘Screw Device/Love Bracelet 3D shape’).
At first, it received notices of objection due to a lack of distinctiveness. However, after overcoming the key hurdles in proving acquired distinctiveness, Cartier successfully obtained a registration.
TIPO’s database shows that during the examination stage, the examiner required Cartier to prove that the mark had acquired secondary meaning. It appears that the luxury brand submitted sufficient and relevant use evidence and was thus able to overcome the examiner’s objection. The registration record on TIPO’s website includes a note indicating that Cartier has used the trademark, which has become, in trade, a sign that distinguishes the brand’s goods and can therefore be registered according to Article 29(2) of the Trademark Act.
TIPO’s website does not provide any information on the use evidence that Cartier submitted in order to overcome TIPO’s objection. However, in another recent case rendered by Taiwan’s IP Court in late 2020, where the issue of whether an applicant’s 3D shape was registrable, the court stated that the following questions should be asked when determining whether a shape merely constitutes the common function or decoration of the identified goods:
- How is the 3D shape used by the applicant, and do others in the same industry use the same 3D shape?
- How long has the 3D shape been used in the market and is its sales amount and market share ratio significant in the related market?
- How is the 3D shape promoted and advertised and did the applicant emphasise the 3D shape when promoting or advertising, such that consumers will be able to recognise the 3D shape itself as identifying the source of the products?
In addition to these questions, a proper market survey report and foreign registration certificates may also be helpful in convincing TIPO that a 3D shape has acquired secondary meaning and the necessary distinctiveness.
Judgment as to whether a 3D shape has acquired secondary meaning is made on a case-by-case basis. Therefore, applicants seeking to obtain trademark registrations for 3D shapes should prepare proper use evidence before filing an application to register a 3D shape, as it is very likely that TIPO will require applicants to submit such evidence in order to obtain a registration.
Monica Wang, Sarah Sun
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