WAYNE LEE*

Trade dress is defined as “the design and shape of the materials in which a product is packaged. Product configuration, the design and shape of the product itself, may also be considered a form of trade dress.”[1] Put differently, trade dress protects the exteriors of a product – how brand owners “dress” their products for trading purposes.

The USA was one of the first countries worldwide to explicitly recognize in legal terms the protectability of trade dress with the enactment of Section 43 of the Lanham Act. Trade dress was first introduced into European Union (EU) law through Council Directive No. 89/104/EEC in 1988, which was then repealed and supplanted by Directive 2008/95/EC on October 22, 2008 in which wordings pertaining to trade dress remained. In 1994, the United Kingdom, then still a member state of the EU, enacted and subsequently passed into law the Trade Marks Act 1994 in response to EU’s 1988 Directive, thus formalizing trade dress’ role as a trademark under Section 1(1).

While the US and EU moved in that direction, in contrast Taiwan opted for a different approach when addressing matters involving trade dress. Below is a brief introduction to the current status with regard to trade dress here.

1. Overview

It is commonly agreed that trade dress is a type of trademark, but unlike in many other countries, Taiwan’s Trademark Act does not expressly address trade dress in its articles. Instead, the Taiwan’s Patent Act, Trademark Act, Copyright Act (the three Acts) and Fair Trade Act collectively provide trade dress with the foundation for protection as a whole. Simply put, a work (whether it be 2D or 3D) may be entitled to protection and claimable rights under the three Acts respectively if the requirements within each Act are separately met[2], while the Fair Trade Act affords supplementary grounds for protection if a work falls short of the criteria provided for in any of the three Acts.

Trade dress in Taiwan must undergo different examinations in accordance with either the Patent Act (specifically, regulations concerning design patents) or the Trademark Act to be granted protection relative to each canon, while copyright may also be claimed if the trade dress in question is of originality. If, after examination, a creation is rejected design patent registration due to a lack of industrial applicability, novelty or creativeness in view of prior art, or is rejected trademark registration due either to distinctiveness issues or similarity with existing registrations, and copyright alone may not be sufficient when addressing infringement, enforcement of trade dress may still be achieved under Paragraph 1 of Article 22 of the Fair Trade Act, as described below.

2. Paragraph 1 of Article 22 of the Fair Trade Act

The primary stipulation that tackles with trade dress in Taiwan, Paragraph 1 of Article 22 of the Fair Trade Act plays an important role in the context of protecting trade dress here. As written, it reads as the following:

“No enterprise shall have any of the following acts with respect to the goods or services it supplies:

1. using in the same or similar manner in the same or similar category of merchandize, the personal name, business or corporate name, or trademark of another, or container, packaging, or appearance of another’s goods, or any other symbol that represents such person’s goods, commonly known to the public, so as to cause confusion with such person’s goods; or selling, transporting, exporting, or importing goods bearing such representation; or
2. using in the same or similar manner in the same or similar category of services, the personal name, business or corporate name, or service mark of another, or any other symbol that represents such person’s business or services, commonly known to the public, so as to cause confusion with the facilities or activities of the business or service of such person.”

By its terms, Paragraph 1 is against passing-off throughout. Not only does it ban the “use” of well- known trade dress in a manner which may induce confusion, it also stands firmly against any commercial activities involving famous trade dresses to which participants in such activities have no legitimate claims. Of particular relevance here is the wording “commonly known to the public,” which, under local practices, is to be construed as connoting the status of being “well-known.” That is, being well-known to the public is a threshold every trade dress must cross to gain protection under the Fair Trade Act. As to how “well-known” is recognized, it is a complicated matter but generically speaking the “amount of exposure” and the “duration of exposure” in commerce with respect to the trade dress in question are two primary variables that will have the most impact on whether a given trade dress falls within or outside the baselines of the Fair Trade Act.[3]

Also noteworthy is the Paragraph 2 of Article 22 which introduces a prohibition to the compatibility between trade dresses and registered trademarks. It provides:

“The provisions of the preceding paragraph are not applicable to the personal name, business or corporate name, or trademark of another, or container, packaging, or appearance of another’s goods, or any other symbol that represents such person’s goods, as referred to in the preceding paragraph, if that enterprise has obtained a legally registered trademark.”

In other words, trade dresses and trademark registrations are two mutually exclusive aspects in Taiwan’s legal system. Trade dress may only be entitled to protection and claimable rights in relation to Paragraph 1 of Article 22 of the Fair Trade Act, provided that the protection-seeking proprietor holds no trademark registration directed to the trade dress in question in Taiwan. Conversely, a proprietor’s ownership of a trademark registration naturally forecloses the applicability of trade dress clauses within the frame of the Fair Trade Act.

3. Court’s opinion: Rimowa v. Rowana

With regard to trade dress in Taiwan, Rimowa v. Rowana[4] cannot be ignored despite having yet to reach a decisive conclusion, because its prosecution history sheds lights on the attitude of the country’s judiciary towards trade dresses, as well as what constitutes the “trade dress” as set forth in the Fair Trade Act.

Rimowa is a prominent luggage manufacturer based in Germany. In 1950, Rimowa introduced a design pattern consisting of a series of evenly-spaced grooves and ridges appearing uniformly across the surface of a suitcase, which quickly became its signature design. Having established a prestigious reputation worldwide for its suitcases featuring the “multi-pleat” design, in mid-2014, Rimowa filed a trademark application with the Taiwan Intellectual Property Office (TIPO), seeking official registration for the design as a three-dimensional trademark in connection with suitcases, briefcases, etc. However, the application was not successful  as the design  was deemed to lack distinctiveness.[5] Rimowa withdrew the application.

In early 2015, Rimowa became aware of Rowana, a luggage manufacturer in Taiwan began distributing 'mutli-pleat' suitcases highly similar to the one devised by Rimowa roughly 60 years earlier.

With an aim to deter infringement, Rimowa raised a lawsuit against Rowana, petitioning for the preclusion of Rowana’s use of the design in question on the grounds that its multi-pleat design was entitled to protection under the Fair Trade Act because it fell well within the definition for “trade dress” as set forth in the Act. The case’s first instance eventually ended with a ruling partially in favor of Rimowa. The Intellectual Property Court[6] provided three primary reasons detailing the forming of its inner conviction that led to the ruling:

1. The exteriors of Rimowa’s suitcases remained consistent since the company’s entering Taiwan in 2003, objectively connecting the multi-pleat design to the brand. The court also espouses Rimowa’s proposition that the volume of commercial exposure Rimowa’s suitcases have been subjected to is enough to enable the purchasing public to recognize the design as trade dress owned by Rimowa.

2. There is sufficient evidence to suggest that the design is well-known to the public and is therefore capable of serving as a sign identifying a particular source, thereby satisfying the requirements as set forth in Paragraph 1 of Article 22 under the Fair Trade Act.

3. Lastly, Rowana’s version of the design is indeed similar in appearance to that devised by Rimowa and is thus liable to entail confusion amongst fellow competitors or the purchasing public.

However, the decision was later challenged, as the parties both appealed to the Supreme Court, which later reversed the Intellectual Property Court’s judgement[7]. The Supreme Court presented several questions which still await answers, based on which it remanded the case. First off, the Supreme Court embraced an opinion which implicated that Rimowa’s suitcases had always been used in conjunction with the company’s own trademark, and the “trade dress” found to be well-known by the Intellectual Property Court was in fact a combination of the multi-pleat design along with Rimowa’s trademark and its patented wheels, which begged the question whether the status of Rimowa’s design as well-known trade dress would still stand if the “RIMOWA” trademark itself and the patented wheels were stripped away from the suitcases. Further, the Supreme Court also cast doubt on whether the purchasing public would really be drawn to base its purchases on the fact that the design was an identifiable source of goods, etc. The case remains on trial pending a conclusion as of the writing of this article.

4. Conclusion

All in all, although the judiciary’s opinions regarding the disputes between Rimowa and Rowana remain inconclusive, a context is sustained: Taiwan generally approaches the concept of “trade dress” with rigor, steepening the slope for those seeking support in the Fair Trade Act for their trade dresses.

Indeed, unregistered trade dresses may be enforced pursuant to the Fair Trade Act, but enforcement of such nature may be elusive and may not always return favorably under the current setting. For trade dress-owning businesses seeking entrance to Taiwan’s market, the ideal path to gaining comprehensive protection would be to first benchmark its trade dress against the requirements as set forth in the Patent Act (in particular, those relevant to design patents) and the Trademark Act. Patenting trade dress could afford the owner means to deter attempts at plagiarism of the invention that the trade dress represents. More fittingly, trademarking trade dress is especially befitting and recommendable because trademark registrations will enable the registrants to initiate various actions (e.g., Oppositions, Invalidations) on a well-founded basis, not to mention the fact that trade dress has long been considered a member of the trademark family. The TIPO accepts both two-dimensional and three-dimensional designs being registered as trademarks, therefore it is generally encouraged that both versions be sought to gain full protection.

On the other hand, it is also suggested that evidence supporting the use of trade dress in question which occurred in Taiwan be collected regularly, as this could be very helpful in the event of encountering an objection when seeking trademark registration for trade dress, or if it should come to pass that the Fair Trade Act is the only claimable basis available. The submitted evidence should be substantial, and should be able to sufficiently support the volume of commercial exposure, as well as the time span of such exposure with regard to the trade dress at issue. We believe that evidence collection is a matter of degree and of kind, the earlier the collecting effort is commenced, the greater would be the chance of success.  

Footnotes:

1. As defined by Legal Information Institute, Cornell Law School.

2. In regard the patent protection, of the three types of patents applicable in Taiwan (i.e., invention patent, utility model patent and design patent), design patent carries the most relevance when it comes to addressing trade dress. As such, the term “patent” mentioned throughout this article refers exclusively to design patent alone and does not cover other types of patents.

3. The recognition standards are explicitly defined in the Fair Trade Commission’s Guidelines on Article 20 of the Fair Trade Act which, despite having been nullified in 2015, continues to be cited by Taiwan’s courts as the underlying standards for determining whether a work falls within the definition of protectable trade dress under the Fair Trade Act.

4. Rimowa v. Rowana First Instance: Taiwan Intellectual Property Court Civil Decision 2017 Min Gong Su Zi No. 1.

5. In actuality, Taiwan’s Intellectual Property Office holds a tight grip on the examination of trademark distinctiveness, and the design Rimowa seeks to protect in this case is an exemplar epitome of that rigorousness. Distinctiveness is benchmarked against a set of strictly crafted rules, therefore works may be rejected registration due to a lack of distinctiveness unless there is sufficient evidence to suggest otherwise.

6. The Intellectual Property Court was renamed to “Intellectual Property and Commercial Court” on July 1^st of 2021.

7. Rimowa v. Rowana Second Instance: Taiwan Supreme Court Civil Decision 2020 Tai Shang Zi No. 2369.

Reference:

⨀ Legal Information Institute, Cornell Law School, accessed 21^st December, 2021, <https://www.law.cornell.edu/wex/trade_dress>

*Trademark Division of Tai E International Patent & Law Office