According to Article 18 of the Trademark Act, a trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. The term “distinctiveness” used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.
The trademark in dispute is a drawing of a 3-D bottle. The shape of the bottle is generally seen on the beverage packing. Although the plaintiff argued that the said 3-D mark owns its distinctiveness because there are special designs on the bottle which can be distinguished from the other kinds of beverage packing and be recognized by the consumers, the designs of the bottle are only simple changes of general beverage packing or wine bottles which are commonly seen in the market and do not generate an impression of differences among the general shapes of bottles. While using the said 3-D mark on the goods related to beverages, the general consumers will only regard the bottle as a common beverage packing with the functional or decorative shape. It cannot be an indication of the source of goods, and thus lacks the distinctiveness to be a trademark.
As the plaintiff further stated, there are special designs on the middle and latter parts of the bottle which have the function of avoiding the slippery problem due to the water vapor on the bottle. So, the consumers can hold the bottle safely. The aforesaid is a functional design on the product. The functional design of a product shape or packing can improve the technology of the industry and make people use the products conveniently. If the functional design belongs to the individual solely, the market will be monopolized. Such situation will harm the fair competition and the improvement of technologies of industry. However, if there is no protection about the functional designs, it will also damage the designers’ motive for creating new designs. Therefore, in order to get a balance between the encouragement of creating new designs and the protection of public interests, Patent Act provides a limited term of protection for some kinds of functional products. After the expiry of the term, the said patents become public property for everyone to use. As to the purpose of Trademark Act, it is for protecting the marks which have the function of identifying the source of goods or services. The term of the protection of the trademarks can be extended permanently. In order to avoid harming the fair competition and the social improvement, a shape of the goods or packing thereof shall not be registered as a trademark if it is indispensable for performing the intended function(s).
As to the other evidence of use submitted by the plaintiff, it was used with the plaintiff’s other registered trademarks. The consumers usually pay attention to the trademarks affixed to the bottles instead of the shapes of the bottles. So, the shapes of the bottles are not capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguished goods or services of one undertaking from those of others.
Source: TIPO Newsletter issued on March 05, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7984.htm#511358)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
