Applying for a Three-dimensional Trademark in Taiwan: What to Expect

08.30.2024

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Paralleling the heightened awareness of intellectual property rights, the demand for trademark registrations has witnessed a continuous upward trajectory across diverse sectors in recent years. In line with this prevailing trend, three-dimensional trademarks (hereinafter referred to as “3D marks”) have gained increasing prominence, driven by the escalating need from businesses for trademarks capable of safeguarding their designs. In this article, we provide an outline of Taiwan’s 3D mark registration process, complemented by a look at some of the existing cases, to provide readers with a fundamental comprehension of what to expect before and after a 3D mark application is filed.

1. Introduction

The Taiwan Intellectual Property Office (TIPO)’s Examination Guidelines on Non-traditional Trademarks (hereinafter referred to as the “Guidelines”) define a “3D mark” as a spatial shape characterized by length, width and height, capable of enabling consumers to distinguish the source of various goods or services.[1] According to the Guidelines, possible embodiments of 3D marks may include:

(1) The shape of the goods themselves.

(2) The shape of product packaging.

(3) Three-dimensional distinctive shapes that are not part of the goods or their packaging containers.

(4) The decorative design of service establishments.

3D marks may of course come in forms other than those exemplified above, but these are by far the most common ones in Taiwan. For an individual/entity seeking to protect its 3D design, trademarking the design emerges as a logical and advisable course of action. This brings us to the process of applying for and ultimately registering a 3D mark in Taiwan, as outlined in the following sections.

2. Procedures to be expected for a 3D mark filing

In order to be registered and protected, a 3D mark application must sequentially undergo the following procedures:

I. Preparing and filing an application

As is the case with any trademark application, the filing of a 3D mark begins with preparing the necessary elements, which include:

a. A Power of Attorney

Pursuant to Article 5-I of the Enforcement Rules of the Trademark Act,[2] a Power of Attorney is mandated if an application is to be filed through a proxy. The Power of Attorney requires no notarization or legalization, and a scanned copy is generally sufficient. However, holding on to the original is advisable, as the TIPO may, from time to time, require the original copy for authentication.

b. Certified priority document (if any)

Under local practices, applying for a 3D mark with a priority claim warrants a certified copy of the application form as filed in the jurisdiction relied upon for priority.

A priority document may be submitted alongside or after the trademark’s filing, but in the latter case, the priority document must be submitted within three months following the filing date in Taiwan, or else the priority claim will be deemed as not having been made under Articles 20-IV and 20-V of the Trademark Act.[3]

c. Identification of goods and/or services

The scope and coverage of the identification of goods and/or services in a 3D mark case are contingent on the applicant’s needs. However, designating goods/services that are already in the TIPO’s pool of pre-approved descriptions would facilitate the TIPO’s review, thereby shortening the overall review process.

d. Trademark representation

As prescribed by Article 19-IV of the Trademark Act,[4] a trademark’s representation should be clear and unambiguous. Traditional or otherwise, this requirement is universally applicable to all trademark filings. Where a 3D mark differs from a traditional trademark is that its presentation should consist of view(s) depicting the trademark’s three-dimensional shape from different angles (e.g., top views, bottom views, side views, and oblique views), and the allowance of up to six views of a trademark. The requirement for multiple views is not absolute. The applicant may submit fewer than six views if they believe the views submitted are sufficient to adequately represent their trademark.

If any of the submitted views are unclear, illegible, blurry, or simply unintelligible from consumers’ perspective, the TIPO will request via an Official Action the submission of a new one to replace the one originally submitted. However, the new view should be consistent with the originally submitted one it is intended to replace and may not be altered in any way other than enhancing the clarity of the representation or resolving concerns raised by the TIPO; otherwise, the alteration may be considered a violation of Article 23 of the Trademark Act.[5]

e. Trademark description

The trademark description is another important element indispensable to a 3D mark case; its purpose is to provide a detailed written account of all the elements of a 3D mark so as to enable the public to understand the scope of the trademark rights claimable by its proprietor. Accordingly, a trademark description should be clear and unambiguous, and it should accurately depict the trademark in question.

The trademark description is a special requirement unique to non-traditional trademarks and must be provided at the time of filing. The acceptability of a trademark description is subject to review and the assigned Examiner’s discretion; subsequent amendments may be necessary.

Once these elements are ready, the filing may then be made. The official fees for 3D marks are identical to those for traditional trademarks. However, the examination process for 3D marks may be protracted – applicants of 3D marks typically have to wait at least eight months before receiving the initial examination report.

II. Examination and review

A filed 3D mark will be assigned to an Examiner who will perform the necessary review to determine the trademark’s registrability and be ultimately responsible for approving or rejecting the application. A 3D mark application must successfully navigate two stages of review to gain registration – a “procedural examination,” followed by a “substantive examination.”

○ Procedural examination

During the procedural examination, the assigned Examiner reviews the procedural aspects of the filed case and verifies adherence to filing requirements. Issues that will be addressed during this stage include:

Whether there are any issues with the submitted Power of Attorney.
Whether there are any issues with the priority claim and/or priority document.
Whether the identification of goods/services is acceptable, or if amendments are required.
Whether the trademark description accurately portrays the trademark as filed, or if amendments are required.
Whether the trademark drawing is legible and easily intelligible.

If any issue is identified during this stage, the Examiner will typically request rectification within a period of two months through an Official Action. If no response is made by or prior to the deadline to address the identified issue(s), the application as a whole will be dismissed.[6] A case with no procedural issues (either the case is inherently free of procedural issues or all the identified issues have been properly addressed) may advance to the substantive examination.

○ Substantive examination

The substantive examination is performed to determine the trademark’s registrability and eligibility for legal protection. A 3D mark undergoing substantive examination will be examined for the following issues:

Likelihood of confusion

Article 30-I-10 of the Trademark Act prohibits the registration of any trademark that is “identical with or similar to a registered trademark or an earlier filed trademark and to be registered for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion among relevant consumers.” A 3D mark will be assessed in accordance with this Article to determine if it is so similar to an existing registration and/or prior trademark that confusion is likely to occur in commerce.

Lack of distinctiveness

“Distinctiveness,” as defined in Article 18-II of the Trademark Act, 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 absence of inherent distinctiveness in a 3D mark can manifest itself in various forms, each governed by a specific provision under the Trademark Act.

Descriptiveness

As mentioned earlier, a 3D mark can take the shape of the applied-for goods, but due to the readily apparent connection between the trademark itself and the applied-for goods, such a trademark may be vulnerable to an objection based on Article 29-I-1 of the Trademark Act, which particularly prohibits trademarks with descriptiveness issues from registering.[7]

Genericness

Under Article 29-I-2 of the Trademark Act,[8] a 3D mark consisting exclusively of a generic design or term for the applied-for goods may be denied registration. This is because a 3D mark with such attributes may generally not be relied upon for determining sources due to the commonness of its shape in relation to the applied-for goods. For example, a rectangular box is considered generic in relation to “cigarettes” in International Class 34 because the rectangular shape is commonly adopted by tobacco companies for cigarette packaging. A generic three-dimensional shape cannot be registered as a trademark, even if it has acquired distinctiveness through use, as it would unfairly restrict competition if allowed to be appropriated for exclusive use by a single party.[9]

Devoid of any distinctiveness

Under Article 29-I-3 of the Trademark Act,[10] a 3D mark consisting exclusively of a design that is unable to indicate a particular source may be deemed devoid of general distinctiveness and be denied registration accordingly.

Simple geometric shapes, interior designs, or common decorations, as commonly perceived by consumers, generally lack the capacity to indicate a particular source. For instance, a Maneki-neko, a common decoration in businesses believed to bring good fortune, when applied for use in connection with various retail services, is unlikely to be distinctive. From consumers’ point of view, a design of such kind may not be entitled to registration unless its secondary meaning can be established.[11]

Overcoming alleged lack of distinctiveness requires strong evidentiary support – the applicant must prove, by preponderance of evidence, that its trademark has attained a secondary meaning through extensive use in commerce to gain registration. An exception to this is, again, genericness, which is an issue unsurmountable by proving acquired distinctiveness as a trademark with such attributes would significantly impair fair trade if allowed to be monopolized.

Functionality

Article 30-I-1 of the Trademark Act establishes a bar to the registration of any trademark that is “exclusively necessary for the goods or services to be functional.”

The functionality of a three-dimensional shape is established if it is indispensable for the intended purpose or use of the goods/services or if it exerts an influence on the cost or quality of the goods or services. If a three-dimensional shape exhibits functional attributes and confers a competitive advantage in the originator’s field of business, to promote fair competition and enable general businesses to freely utilize it, the originator may only seek patent protection for a finite period, and such a shape may not be granted trademark registration for long-term exclusive use by a particular party.[12] An applied-for 3D mark with functional features constitutes an absolute bar to registration, regardless of evidence showing that the trademark has acquired distinctiveness.

A shape is considered functional and cannot be registered as a trademark if its production is relatively simple or inexpensive, or if its method of production is easier or cheaper than that of competitors. Granting exclusive rights to such a shape would unfairly impede competition by forcing competitors to adopt less efficient or more costly production methods.

In other words, functional matter cannot be protected as a trademark. A 3D mark encompassing functional elements is not registerable unless the trademark also comprises additional elements that are distinctive, in which case the functional elements may be disclaimed to address distinctiveness concerns. This restriction is intended to prevent trademark law from inhibiting legitimate competition by allowing a producer to monopolize a useful product feature, so as to ensure a level playing field in trade.

A Preliminary Objection detailing all the obstacles barring registration will be issued with a two-month deadline to make a response. Occasionally, the TIPO may also combine issues identified in both stages in a single official letter and require a response within the prescribed deadline.

A formal response must be made to address the grounds of objection. Failure to do so will result in the 3D mark as a whole being rejected. Similarly, a response proving unconvincing to the assigned Examiner will also result in a direct rejection.

III. Approval, registration and publication

The applicant of a 3D mark confirmed to be free of any issues barring its registration will receive from the TIPO an official Notice of Approval, prescribing a period of two months to pay a registration fee. A Registration Certificate with an assigned registration number will only be issued after the registration fee is duly paid.

Once the trademark has been registered, it will be published in the Trademark Gazette and enter a period of public review lasting three months, during which any third party may institute an opposition on the grounds of a believed violation of the Trademark Act. If no challenge is raised during the opposition period, the registration will remain in effect for ten years, after which it may be renewed every ten years in perpetuity if the holder so desires.

3. Analysis of prior cases

As mentioned earlier in the Introduction, there are four common types of 3D marks. Below we will introduce one case for each type to provide readers with a deeper understanding of the practical operations of 3D marks in Taiwan.

I. The shape of the goods themselves: Registration No. 02146093 “Oreo cookie’s configuration”

Intercontinental Great Brands LLC made a filing on April 7, 2020, seeking to register the iconic Oreo cookie as a 3D mark for “dairy products, cream spreads, yogurt, cheese, etc.” and “chocolate, cakes, cookies, confectioneries, etc.” in International Classes 32 and 33 respectively. The trademark’s views and description are as follows:

Upon examination, the Examiner issued an objection on the grounds that the Oreo cookie shape, claimed as part of the trademark, may be perceived by consumers as a description of relevant product characteristics, a generic food shape, an advertising decorative design, or a design devoid of general distinctiveness. The applicant subsequently overcame the objection by disclaiming the shape of the cookie.

In the case where a 3D mark consists of the shape of the goods themselves or their packaging, its registrability is often challenged by the Examiner on the grounds that the shape is either descriptive of the applicant’s goods/services (e.g., the three-dimensional shape of a tooth or eye used for a dental or eye clinic sign),[13] is a generic three-dimensional shape commonly used in the industry for particular goods or services (e.g., a slender-necked round bottle shape used for wine),[9] or is simply not inherently distinctive. In such a case, where the trademark encompasses other distinctive elements in addition to the shape, it is a common practice to disclaim the shape of the trademark to gain registration.

II. The shape of product packaging: Registration No. 02288615 “Taiyen’s water bottle design”

On September 3, 2020, Taiyen Biotech Co., Ltd., a state-owned enterprise in Taiwan, filed an application for the 3D design of the water bottle used as the outer packaging for its goods “mineral water [beverages], table waters, distilled water, bottled water, etc.” in International Class 32. The trademark’s views and description are given as follows:

The trademark encountered a challenge targeting its distinctiveness during the review procedure – the assigned Examiner alleged that the trademark is devoid of any distinctiveness under Article 29-I-3 of the Trademark Act[10] because from consumers’ point of view, it merely conveys the impression of a packaging container for Taiyen’s goods in Class 32, and thus lacks distinctiveness.

In response to the Examiner’s lack of distinctiveness allegation, Taiyen argued that the trademark had attained a secondary meaning through extensive use in commerce and supported the claim with evidence of use. They eventually succeeded, and the trademark was granted registration due to acquired distinctiveness having been established.

III. Three-dimensional distinctive shapes: Registration No. 02211383 “EasyCard’s mascot design”

EasyCard Corporation, the operator of Taiwan’s largest transportation fare card system, applied on June 28, 2021 to register its mascot design as a 3D mark for use in connection with “apparel, footwear, headwear, etc.” in International Class 25. Alongside the filing, the following views and trademark description were provided:

The trademark description in this case accurately describes the trademark as shown in the reproduction. The hamster figure itself is not only unique, but is also arbitrary in relation to the applied for goods “apparel, footwear, headwear, etc.” in International Class 25. The trademark is distinctive in that it is capable of indicating a particular source, and hence it received registration without encountering any objections.

IV. The decorative design of service establishments: Registration No. 02213137 “Tao Zhu Yin Yuan’s exterior design”

Designed by the Belgian architect Vincent Callebaut and known for its unique appearance, Tao Zhu Yin Yuan (also known as Agora Garden) is an iconic residential building located in Taipei. The building’s constructor, BES Engineering Corporation, filed on October 17, 2019 a 3D mark application with the following details to trademark the building’s exterior design in connection with the services “restaurant, hotel, aparthotel, serviced apartments, bed and breakfast hotel, etc.” in International Class 43:

The trademark’s prosecution history is an intricate one. It was initially filed under application number 108068155 and was subsequently challenged by the Examiner due to concerns regarding its descriptiveness in relation to the applied-for services and its lack of general distinctiveness. The applicant’s arguments proved unpersuasive to the Examiner, and the application was rejected. The applicant appealed the decision, and the Administrative Appeal Review Committee[14] reversed the Examiner’s decision,[15] remanding the case to the TIPO for reevaluation. Upon reconsideration (during which a new application number 108968155 was assigned to the case), the TIPO maintained its position that the trademark lacked inherent distinctiveness because it was incapable of indicating the source from which the applicant’s services emanated and would need to rely on the establishment of its acquired distinctiveness to gain registration. Only after the applicant presented evidence of extensive use demonstrating the trademark’s acquisition of secondary meaning was it granted registration. The case aptly demonstrates that the requirement for distinctiveness applies equally to both traditional and non-traditional trademarks. A trademark, regardless of its form, must be capable of indicating a particular source.

4. Conclusion

Trademarking a 3D design can afford reasonable protection, but navigating the 3D mark landscape in Taiwan can be challenging. For one, an accurate trademark description can be elusive. Even if the trademark survives the initial procedural review, the TIPO may still require the establishment of the trademark’s acquired distinctiveness or clarification as to its functionality.

In addition, three-dimensional shapes are generally more difficult to establish as distinctive than their two-dimensional counterparts, particularly in cases where the three-dimensional shape is the shape of the goods themselves or the shape of product packaging. Due to their inherent connection or close association with the goods, consumers typically perceive these shapes as serving a functional purpose or as decorative designs, rather than as conveying information about the source of goods. As a result, demonstrating the distinctiveness of three-dimensional shapes is typically more challenging than establishing the distinctiveness of two-dimensional trademarks.[16]

For applicants seeking to trademark their 3D designs in Taiwan, we provide a few noteworthy points that may facilitate the application process.

Ensure the legibility of the view(s) (representation) of the trademark.
The trademark description may be amended during the examination process. Therefore, while its accuracy is important, it is difficult and unnecessary to, at the time of filing, strive for a perfect description that does not require any amendments.
A design with functionality could undermine fair competition if trademarked and is thus generally not allowed. Instead, patenting the design could be considered as an alternative approach.
A 3D mark should be put to actual and widespread use, and the evidence of use should be regularly collected to enhance the chance of success. Registering a 3D mark with limited exposure in commerce is very difficult. Similarly, a lack of evidence of use could also jeopardize the establishment of the trademark’s secondary meaning.

The process of registering a 3D mark in Taiwan can be complex and time-consuming. However, by carefully following the steps outlined above and seeking professional assistance where necessary, applicants may increase their chances of success. With proper protection, 3D marks can be valuable assets for businesses operating in Taiwan.

References:

[1] Point 3.1 of the Examination Guidelines on Non-traditional Trademarks, published by the Taiwan Intellectual Property Office (TIPO).
[2] Article 5-I of the Enforcement Rules of the Trademark Act requires that a Power of Attorney specify powers delegated to the agent “where an applicant appoints an agent.”
[3] Article 20-IV of the Trademark Act: “The applicant shall submit, within three months from the day following the date of filing of the application, a copy of the application certified as admitted by the country or the member of the WTO referred to in the preceding paragraph.” Article 20-V of the Trademark Act: “If an application is not filed pursuant to the preceding paragraph, the priority claim thereof shall be deemed not having been made.”
[4] Article 19-IV of the Trademark Act: “A reproduction of the trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, and easily intelligible.”
[5] Article 23 of the Trademark Act: “No amendments shall be made to the reproduction of a trademark and the designated goods or services thereof after an application for trademark registration has been filed, unless such amendment is a restriction of designated goods or services or an amendment to the reproduction of a trademark which does not substantially change such trademark.”
[6] Article 8-I of the Trademark Act: “Unless otherwise prescribed in this Act, an application or other proceedings of trademark shall be inadmissible if an applicant, holder or other interested person thereof has failed to comply within the statutory period, to conform to legal formality that cannot be amended, or to conform to legal formality which is not amended within the period specified in a notice. However, if the failure to conform to legal formality which is not amended within the specified period has been amended before the disposition is rendered; such application or proceeding shall still be admissible.”
[7] Article 29-I-1 of the Trademark Act: “A trademark shall not be registered if it is devoid of distinctiveness in consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services.”
[8] Article 29-I-2 of the Trademark Act: “A trademark shall not be registered if it is devoid of distinctiveness in consisting exclusively of the generic mark or term for the designated goods or services.”
[9] Point 3.2.3.2 of the Examination Guidelines on Non-traditional Trademarks, published by the TIPO.
[10] Article 29-I-3 of the Trademark Act: “A trademark shall not be registered if it is devoid of distinctiveness in consisting exclusively of other signs which are devoid of any distinctiveness.”
[11] Point 3.2.3.3 of the Examination Guidelines on Non-traditional Trademarks, published by the TIPO.
[12] Point 3.2.4 of the Examination Guidelines on Non-traditional Trademarks, published by the TIPO.
[13] Point 3.2.3.1 of the Examination Guidelines on Non-traditional Trademarks, published by the TIPO.
[14] On September 26, 2023, as part of the Executive Yuan’s organizational overhaul, the Ministry of Economic Affairs amalgamated the Legal Affairs Committee and the Administrative Appeal Review Committee to form the new “Department of Economic Legal Affairs.”
[15] Administrative Appeal Review Committee, Ministry of Economic Affairs, Administrative Appeal Decision No. 11006300720: “… the design of the building’s exterior is not one typically employed in the industry and exhibits distinctiveness. The rejection decision neglected the possibility of other commercial values and summarily concluded that the design lacks the ability of indicating the source of goods or services. This conclusion is overly hasty.”
[16] Point 3.2.3 of the Examination Guidelines on Non-traditional Trademarks, published by the TIPO.

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