Home >> News & Publications >> Lee and Li Updates >> Newsletter >> Under the Copyright Act, Wording and Device of a Trademark May Receive Separate Treatment

Search by Year: Search by Year:
Time Period: ~

Under the Copyright Act, Wording and Device of a Trademark May Receive Separate Treatment

The registration of a trademark, such as a company logo, normally falls under one of the following categories: word(s) only, device(s) or symbol(s) only, or a combination of the two.  However, according to the judgement 103-Min-Zhu-Su-Zi No. 84 rendered by the Intellectual Property Court on June 8, 2015 and its appeal court's judgment 104-Min-Zhu-Shang-Yi-Zi No. 11 rendered on February 4, 2016, not all of the aforesaid forms of representation should be protected by the copyright.  In other words, the Intellectual Property Court held that, with regard to trademark representations, copyright protection may apply to the device(s) portion if appropriate, but the word(s) portion is not subject to protection under the Copyright Act.
In the case presently under discussion, the Plaintiff asserted that it has developed the trademark at issue which includes the word "SUNSHOW" flanked by a device.  The company, which sells electric generators and other related lines of products worldwide, used the concept of transliteration to create the word "Sunshow," as the pronunciation of "Sunshow" is strikingly similar to the company's name in Chinese (双手, Shuāngshǒu, meaning "Both Hands").  The device of the trademark at issue, meanwhile, represents two hands clasped together one over the other.  The Plaintiff asserted that the trademark at issue enjoyed a high level of repute in the industry, such that the Defendant had a high likelihood of coming into contact with it.  The Defendant was thereupon accused of blatantly plagiarizing the wording and the device of the trademark at issue — which was already copyrighted by the Plaintiff — and applied to the Taiwan Intellectual Property Office for the registration of a trademark consisting of the exact same English word ("SUNSHOW") combined with an almost identical device.  The said application therefore constituted copyright infringement.  In its defense, the Defendant argued that both "SUNSHOW" and device lacked originality, that the Defendant had not come into contact with the trademark at issue, and that there were no substantive similarities between the Defendant's trademark submitted for registration and the trademark at issue.
The courts of first and second instance both held that the word "SUNSHOW" was presented in a common typeface which lacked original thought or sentiment; the word held no value in terms of aesthetic appreciation, and was therefore deemed inappropriate to be the subject matter for protection as an artistic work.  The Plaintiff also admitted that the English word "SUNSHOW" had originated from the transliteration of the Chinese phrase for "both hands" (双手, Shuāngshǒu); the Plaintiff had invented this new English word due to the similarity of the pronunciation of "SUNSHOW" to the Chinese phrase.  The word "SUNSHOW" was therefore deemed an English "slogan" in nature, and could not be the subject matter of copyright protection according to Article 9, Paragraph 1, Subparagraph 3 of the Copyright Act.  Therefore, the Plaintiff was not entitled to hold a copyright for the word component, i.e., "SUNSHOW".
However, with regard to the device of the trademark at issue, both the first and second instance courts held that the visual representation was not a simple design but rather a complete pictorial drawing formed by the combination of upper and lower geometric figures to depict two clasping hands with one positioned over the other.  The overall device was considered to be unique and exhibit originality, and was therefore deemed to be a creative artistic work.  Furthermore, the courts determined that the Defendant's pending trademark satisfied the criteria for "contact" and "substantive similarity;" the Defendant had also, by a subjective standard, negligently infringed on the copyright of the said artistic work.  It was therefore adjudicated that the Defendant should be obligated to compensate the Plaintiff for damages sustained by the Plaintiff.
In determining whether the representation of a trademark is entitled to copyright protection, the Intellectual Property Court appears to have adopted a principle of separate distinctions for different components, i.e., the trademark in question may be divided into word(s) and device(s) components, and the copyrights for each are determined independently.  Furthermore, if the wording in a trademark is presented in a common typeface and characterized as a "slogan," the word(s) and device(s) of the said trademark may be treated differently under the Copyright Act.  Whether the courts will continue to adopt this principle of distinction in future rulings, however, remains to be seen.