Newsletter
3D OBJECTS MAY INFRINGE ON 2D TRADEMARKS
The question of whether, under the Trademark Act (in force since 28 November 2003) or the old Trademark Act, the unauthorized creation of an identical or similar three-dimensional product on the basis of a two-dimensional trademark design registered by another constitutes "use of a trademark," and, therefore, infringes upon the trademark concerned, is a matter of considerable dispute in practice. In the past, courts have largely taken the view that if a mark is sufficient to allow general purchasers of goods to distin-guish goods from those of other suppliers, then regardless of whether such mark is used in two-dimensional or three-dimensional form, it still constitutes a trademark and its use is use of a trademark.
However, quite a number of courts later have not been persuaded that use of a three-dimensional version of a trademark violates the old Trade-mark Act. A 2002 criminal judgment of the Shihlin District Court and another of the Taiwan High Court, both explicitly stated that the defi-nition of a trademark contained in Article 5 Paragraph 1 of the Trademark Act refers only to text, drawings, symbols, color combinations, or combinations of the above elements, and there-fore trademark protection extends only to two-dimensional designs, not to three-dimensional appearance or shape. Ac-cordingly, "use of a trademark" is limited to its use in two-dimensional form, and does not in-clude three-dimensional versions of a mark.
However, in a 2003 ruling (which upheld the view taken by the Kaohsiung Branch of the Taiwan High Court in a 2000 civil appeal judgment), the Supreme Court stated that trademarks as defined in the old Trademark Act were indeed limited to two-dimensional designs comprising text, drawings, symbols, color com-binations, or combinations of the above elements, and did not include three-dimensional marks. But this provision was intended to prevent changes to the form, position, layout, or colora-tion of a trademark, and did not mean that the Trademark Act did not protect a trademark from unauthorized use of a three-dimensional form of the mark. To protect trademark exclusivity and consumers' interests, the offences defined in Ar-ticles 61 and 62 of the old Act, involving in-fringement of exclusivity by use of a similar mark, naturally included infringement by the unauthorized creation of an identical or similar three-dimensional product on the basis of a two-dimensional trademark design registered by another.
Article 5 Paragraph 1 of the Trademark Act al-lows for the registration of three-dimensional shapes as trademarks. But such design must still be lawfully registered for it to receive protection under the Act. Section 5.2.9 of the Intellectual Property Office's examination guidelines on Likelihood of Confusion between Marks (an-nounced 28 April 2004), on "Similarity and De-gree of Similarity between Goods or Services," states that "similarity may exist between three-dimensional and two-dimensional trade-marks." In this regard, the IPO appears to take the same position as the above 2003 Supreme Court ruling. Nevertheless, even after the entry into force of the new Trademark Act, the issues of whether the registration of only a two-dimensional trademark is sufficient to pre-vent the use by another of a three-dimensional representation of the mark, and whether a regis-tered three-dimensional trademark is infringed by the use of a two-dimensional version, remain highly controversial, and still await clarification in practice.