Taiwan’s IPO: Registration of Three-Dimensional Trademark Requires Proof of Acquired Distinctiveness

When you see a delicate glass cup with the shape of a cutty Shiba Inu inside, would you consider the cup a trademark? Well, Taiwan’s Intellectual Property Office (“IPO”) said: ”No.”

In a trademark application filed by Redliuli Limited (“Redliuli”), IPO was asked to determine whether Redliuli’s 3D trademark (Application No. 108034910), a glass container with an artistic design of a Shiba Inu inside (as shown below), designated for use in goods like cup, wine glass, liquid container, etc., would meet the requirement of distinctiveness for trademark registration.

In the end, IPO denied Redliuli’s application, because:

1.     According to Article 18.2 and 29.1.3 of Trademark Law, trademark must be distinctive, and a mark merely consisting of non-distinctive elements shall not be registered. As such, three-dimensional shape, like other word, color, or symbol, must be distinctive in order to be qualified for trademark registration.

2.     However, it is relatively more difficult for one to register three-dimensional trademark, especially when the three-dimensional trademark refers to the shape of a product or product package. It is because consumers tend to view the shape of product or product package decorative or functional. For example, in a case where, as here, a design of a Shiba Inu is used inside a glass bottle, consumers are more likely to perceive such a design as a decorative feature, instead of a sign that identify the source of specific goods or service. Thus, for a three-dimensional mark featuring the shape of a product or product package to be registered as trademark, the applicant has to prove said mark has acquired secondary meaning.

3.     In this case, Redliuli argued that its 3D trademark features a high quality cup, involving artistic skills and aesthetic element. Therefore, ordinary consumers would pay higher attention, and are likely to view such a design, i.e., a glass cup with the shape of a Shiba Inu inside, a symbol that identify the source of specific goods. However, IPO disagreed, and ruled that simply because a product demonstrates impressive quality or requires unique skills to manufacture does not necessarily make the product become distinctive. Redliuli still needs to produce relevant evidence, such as records of trademark use, to prove its 3D trademark has acquired secondary meaning.

4.     Since Redliuli produced little evidence showing its sales revenue and the volume of its trademark use, the IPO found the records insufficient to prove that Redliuli’s 3D trademark has acquired secondary meaning. Hence, Redliuli’s application was denied by the IPO.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RnBlNGR1eDY5eHJkNUY5RktQTWY1UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Well...Taiwan’s IP Office Also Knows the Bonsai Bucket Bag

In Taiwan, for a mark to be protectable under Trademark Act, such a mark must be granted by and registered with Taiwan’s Intellectual Property Office. As such, if a foreign brand does not act quickly enough, sometimes it may find its trademark already being registered by someone else in Taiwan, which makes the brand be in a disadvantageous position.

This is what “could” have happened to “Simon Miller”, the Los Angeles-based fashion brand that is well-known for its Bonsai Bucket Bag in 2016 (https://www.whowhatwear.com/emma-watson-simon-miller-bag). Although it had become famous and gained considerable popularity in the fashion industry, “Simon Miller” did not file trademark registration in Taiwan. On December 21, 2017, a trademark application was filed by a third party, seeking trademark registration for the word mark “Simon Miller” (See below) in Taiwan, designated for goods such as bag, purse, backpack, suitcase, shopping bag, etc.

                                                        Application No. 106081347

Good for Simon Miller and bad for the unknown applicant, there is legal ground for Taiwan’s Intellectual Property Office (“IPO”) to protect the foreign brand and deter suspicious free-rider. Article 30.1.12 of Trademark Act provides that a trademark registration shall not be granted if such trademark “being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application.”

Here, Taiwan’s IPO found the trademark application subject to Article 30.1.12, because:

1.     Before the trademark application was filed, “Simon Miller” as a trademark had already been widely used in products like the Bonsai Bag and the Lunch Bag, which were all highly successful and well-known in the relevant markets, including Taiwan.

2.     “Simon Miller” is not a common or ordinary word in Taiwan. However, the applicant sought to trademark exactly the same word, and intended to use in similar goods such as shopping bag, purse, hand bag, etc. Such similarity could not be explained as “pure coincidence.” Rather, such application is made based on attempt to exploit the earlier used trademark with intent to imitate.

Based on the totality of circumstance, the IPO denied the application accordingly. Clearly, for foreign brand that find its trademark registered by bad-faith imitator, Article 30.1.12 of Trademark Act is a feasible avenue. Of course, instead of seeking ex post remedy when finding one’s trademark already taken by someone else, filing trademark application as soon as possible should always be the better way to protect one’s brand in Taiwan.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4RnBlNGR1eDY5eHF4Um9yc1NaeW9BQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

個人於社區大廳、大門以及電梯等公共領域之行動舉止，未必具有合理隱私的期待，若遭公開或為他人所知悉，不當然具備違法性

本案原告為大來賞社區住戶，主張被告身為社區總幹事，竟然未經原告同意，擅自將含有原告畫面的監視器檔案，依桃園市政府警察局桃園分局之指示，交予第三人供案件調查之用，已侵害原告隱私，致生精神上痛苦，故主張依民法第184 條第1 項前段、第2 項、第185 條、第195 條第1 項前段及個資法第28條、第29條第1 項等法律關係，請求被告賠償精神慰撫金新臺幣50萬元。被告抗辯其確實有依警察局來函交付大樓監視器檔案，但此舉是依警察局的要求而提供資料，並無侵害原告權利。

法院認為：

1.     首先，隱私權之保護，必以主張隱私權之人對於該隱私有合理之期待為原則，尚不得漫為主張。而所謂隱私之合理期待，應就個案判斷。個人之行動舉止，於私領域空間，固然係受絕對保護，惟個人於公共領域之行動舉止，並非發生於私領域空間，則如此部分之公開或為他人知悉、為個人同意或可得而知者，即難謂此等對隱私權造成之侵害，具有違法性。

2.     經調查，法院發現系爭監視器檔案所錄得之畫面，係拍攝大來賞社區之大廳、大門以及電梯等處。法院認現代都市生活人口密集，居住空間多為公寓大廈型態之集合式住宅，則住戶間就共用空間之隱私權保障，即應依一般社會大眾對生活隱私之合理期待程度為判斷，而大來賞社區裝設之監視器係拍攝社區大廳、大門以及電梯等處，目的應為管制人員進出、保障住戶安全所為必要之蒐證，而前開監視器所拍攝之處所均為社區全體住戶或得以進入該大樓之人隨時可能使用，應屬不特定人或多數人得共聞共見之場所，此是否屬於一般社會大眾所合理期待具有私密性、非公開活動之私生活領域，已有可疑。

3.     況且，本件被告是依照警察局調查作業的需求而提供監視器檔案，此有警察局函文以及該案員警到庭作證可稽。足見被告提供系爭監視器檔案係基於桃園市政府警察局之要求始然，並非無故提供前開資料予毫無關係之第三人使用，且民眾基於信賴具有國家公權力地位之偵查機關要求提供證據資料供案件偵辦之用，理應合理期待此係合乎法律之規定、而無侵害他人權利之虞，就此觀之，難認被告提供系爭監視器檔案予警局所指定之人之舉，係故意或過失之行為而侵害原告之權利。

基於上述理由，法院認為原告依民法第195 條第1 項前段、個資法第28、29條等法律關係，請求被告賠償其因隱私權受侵害之非財產上損害，於法無據。

資料來源：桃園簡易庭 108 年桃簡字第 1372 號民事判決(https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=TYEV,108%2c%e6%a1%83%e7%b0%a1%2c1372%2c20200306%2c1 )

APPLE QUEEN CANNOT SAVE HER APPLE

In a previous post of TIP (see https://tipnlaw.blogspot.com/2020/01/watch-out-leaf-may-be-enough-for.html), we discuss that APPLE Inc.’s trademarks are so famous that even an apple leaf would be enough for Taiwan’s Intellectual Property Office (“TIPO”) to find a trademark similar with APPLE Inc.’s logo. In a recent case, TIPO cancelled another trademark due to similarity with APPLE Inc.’s trademarks. This time, the cancelled trademark is “APPLE Queen.”

According to TIPO’s records, Mr. Chen, legal representative of GREATWONDER INTERNATIONAL TRADING CO., LTD. (“Great Wonder”), obtained trademark registration for “APPLE Queen” (Reg. No. 01880025, see below) on November 16, 2017, designated for use in goods such as purse, briefcase, handbag, card holder, umbrella, waist pack, backpack, etc. APPLE Inc. filed opposition on February 14, 2018, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

APPLE Inc. argued that the opposed trademark “APPLE Queen” and its trademarks “APPLE” (Reg. No. 01457997) and “APPLE LOGO” (Reg. No. 01070447, 01620273) all feature the characters and image of an apple (see below), so the opposed trademark should be found highly similar with its famous trademarks. Besides, the designated goods of the opposed trademark are also similar with those of APPLE Inc.’s asserted trademarks. 

The trademark holder argued that apple is just usual term that is commonly used by ordinary people, so it will never cause confusion with APPLE Inc.’s trademarks. Besides, the “APPLE Queen” trademark has another stylized apple image, featuring his idea that the leather he uses in the designated products are made of apple peel. As such, the visual image, the concept, and the designated goods of the opposed trademark are different from APPLE Inc.’s asserted trademarks.

TIPO found for APPLE Inc., reasoning that:

1.     Firstly, Article 30.1.11 of Trademark Law provides that “A trademark shall not be registered if …. being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public.”

2.     APPLE Inc.’s asserted trademarks are famous trademarks in Taiwan. APPLE Inc. has obtained numerous trademark registrations in Taiwan since as early as 1983, and the status of its famous trademark has been recognized and affirmed in prior IP Court’s decision and TIPO’s dispositions.

3.     Both the opposed trademark and APPLE Inc.’s asserted trademarks share similar characters “apple,” and demonstrate similar image of apple. As such, there is similarity between the opposed trademark and APPLE Inc.’s asserted trademarks. Although Mr. Chen tried to distinguish the opposed trademark by referring to the leather used by his products, such difference pertains to one’s own idea behind a trademark, and is not relevant when determining similarity of trademark.

4.     In addition, APPLE Inc.’s trademarks are highly distinctive and have been used for a very long time. Due to the high degree of distinctiveness and familiarity, APPLE Inc.’s trademarks are vulnerable to confusion even when the degree of similarity is relatively low. Moreover, compared to the voluminous records submitted by APPLE Inc., there is little evidence provided by Mr. Chen to support the actual use of the opposed trademark.

5.     Additionally, the business of APPLE Inc. is highly diversified, and the asserted trademarks are also designated in similar goods such as credit card holder, sports backpack, wallet, etc. It is likely that APPLE Inc. will enter this business field, and such likelihood should be taken into consideration when evaluating whether there is likelihood of confusion.

6.     Lastly, evidence shows that Great Wonder, the company which Mr. Chen is legal representative, also does business in IT service. It is highly likely that Mr. Chen was aware of the existence of APPLE Inc.’s asserted trademarks when filing application for the opposed trademark. As such, Mr. Chen’s filing probably was not based on good faith. 

In view of the well-known status of APPLE Inc.’s trademarks, the similarity between the opposed trademark and APPLE Inc.’s famous trademarks, the diversification of APPLE Inc.’s business, the high degree of distinctiveness of APPLE Inc.’s trademarks, and the lack of good faith when the opposed trademark was filed for application, TIPO found the opposed trademark should be cancelled in accordance with Article 30.1.11 of Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UEdVSUZUa25LODR4VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true