Taiwan: Proving secondary meaning with a survey

According to Taiwan's trade mark examination practice, a three-dimensional mark in the form of a product packaging container is generally considered not inherently distinctive, and is registrable only upon proof of the secondary meaning acquired through long-term and extensive use. Without such evidence, the TIPO will refuse registration of the mark or require the applicant to disclaim the exclusive right to use the packaging container if there are distinctive word and/or device elements on the packaging container.

In practice, when examining evidence of use submitted for a three-dimensional mark, the TIPO takes the position that consumers will see the word and/or device elements on the packaging container, rather than the packaging container itself, as the identifier of the source of the product. Thus, even though the evidence submitted by the applicant could be voluminous, the TIPO may still deem such evidence not sufficient to prove the secondary meaning acquired by the three-dimensional mark.

The predecessor of EOS Products filed a trade mark application for a three-dimensional mark designated for use on cosmetics, lip balm, etc. The mark consists of the wording "eos" and a three-dimensional configuration of the packaging for the designated goods. The configuration is comprised of a spherical body with an indented portion on one side at the midpoint of the circumference. During prosecution, even though the applicant submitted evidence of use, the TIPO still rejected the application on the ground that the source identifier of the applicant's goods was the wording "eos" and the spherical packaging container was merely an ornamental design without having acquired secondary meaning.

After an unsuccessful appeal, EOS Products initiated administrative litigation before the IP Court. During litigation, in addition to the previously submitted evidence of use, EOS Products submitted reports on brand identity and brand awareness surveys launched in Taiwan. The surveys tested whether local consumers can recognise the spherical packaging, without the "eos" wording, as a source identifier of the relevant products, and the survey results showed that more than half of the interviewees recognised the spherical packaging as a source identifier.

The IP Court, holding that the survey reports were competent proof of acquired distinctiveness of the mark at issue, ruled in favor of EOS Products.

To increase the chances of getting a three-dimensional mark registered, the applicant may consider launching brand identify surveys in the local market in addition to gathering evidence of use.

Julia YM Hung

Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw