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