Taiwan: Can a product package be an artistic work?

Generally, when faced with competitor's illegal copying of a product's package, unless the design of such package is a registered design patent or a trade mark, the claimant used to rely on Article 22 of Taiwan's Fair Trade Act to seek injunctive relief. However, under the Fair Trade Act, there will be a heavy burden on the claimant to show to the judge that the asserted package is a "famous representation" that is "commonly known to the general public". Thus, if the design of a product package is eligible for copyright protection, it would be another powerful tool to combat copycats and free riders.

Recently, in a case between Novartis (Taiwan) Co Ltd and Standard Chem & Pharm Co Ltd, the eligibility of copyright protection for a product package is reviewed and affirmed by the IP Court (see IP Court 2016-Ming-Zhu-Shan-Zi No 4). In this case, Novartis accused Standard of illegally copying the design of Novartis's package for its highly successful drug Exforge, a medicine widely used for treating and controlling high blood pressure. More specifically, Novartis asserted that the graphic and colour design of package of Standard's Asartan has copied and thereby infringed Novartis's copyright over the design of package of its Exforge product.

After comparing the package of Asartan against that of Exforge, the IP Court judge held that an artistic work is protectable as long as it possesses a minimum degree of originality. The originality of an artistic work, be it two-dimensional or three-dimensional, may be shown if the overall arrangement of line, colour, structure and shape of the work demonstrates the author's individuality and aesthetic preference through the exercise of art skills. The judge then found that the overall arrangement of geometric elements such as graphics and lines; and the use of colours of blue, yellow, white and brown, demonstrate a certain degree of creativity and the author's individuality. Such overall arrangement of graphics and choice of colours, added to the image of the designed characters "易安穩/ Exforge" and other relevant explanatory information, are sufficient to meet the requirement of originality of artistic work under Taiwan's Copyright Act.

Having said that, on the issue of substantial similarity, the judge found that except for the use of colours of blue, white, and yellow, other designs and arrangements of aesthetic elements, such as the shapes, lines and arrangement of geometric drawings, presented in these two packages are quite different from each other. It is true that Standard chose to use colours of blue, yellow and white, but the mere use of similar colours does not amount to substantial similarity per se. As such, in the viewpoint of an ordinary and reasonable audience, the package of Asartan would be substantially different from that of Exforge.

Although in the end Novartis's copyright claim failed, this case gives us a glimpse of IP Court's position on the eligibility of copyright protection. While it remains to be seen if the IP Court would follow the US Copyright Act and develop the so-called "conceptual separability test" to determine the copyrightability of a useful article, this case does provide another option to protect the artistic design of a product package in Taiwan.

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