Newsletter
Determination of the Distinctiveness of Three-Dimensional Trademarks
I. Criteria for Determining the Distinctiveness of Three-dimensional Trademarks
Subparagraph 1, Paragraph 1, Article 29 of the Trademark Act provides: "A trademark shall not be registered if it is devoid of distinctiveness in any of the following: (Subparagraph 1) consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services." Paragraph 2, Article 29 further provides: "Subparagraphs 1 or 3 of the preceding paragraph shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant."
The primary function of a trademark is to indicate the source of goods or services in the course of trade and to distinguish them from those of others; distinctiveness is therefore a prerequisite to registration. Where a mark lacks inherent distinctiveness, an applicant may still obtain trademark registration upon proof that, through extensive and intensive use in the market, the mark has "acquired distinctiveness".
A three-dimensional (c trademark is a special type of non-traditional mark. Consumers usually perceive it as the product itself, a utilitarian or ornamental shape, or another marketing device, rather than as an indication of the source of goods or services. Accordingly, the distinctiveness of 3D trademarks is examined under the "Examination Guidelines for Non-Traditional Trademarks" promulgated by the Taiwan Intellectual Property Office (TIPO).
Under Section 3.2.3 of the Examination Guidelines for Non-Traditional Trademarks, applications for 3D marks may cover the following types:
1. The shape of the goods themselves;
2. The shape of the packaging or container;
3. 3D shape signs other than the goods or their containers;
4. Interior design of service premises.
Section 3.2.3 of the Examination Guidelines for Non-Traditional Trademarks further provides that a 3D trademark lacks distinctiveness in the following circumstances:
1. Descriptive 3D shapes: shapes that describe the quality, purpose, raw materials, or other characteristics of the designated goods or services;
2. Common shapes: shapes commonly used by traders for particular goods or services and commonly recognized by the public, which should not be monopolized by a single party lest fair competition be impaired;
3. Other non-distinctive shapes: e.g., simple geometric shapes, store décor, common ornaments.
In addition, Section 3.2.4 of the Examination Guidelines for Non-Traditional Trademarks states that where a 3D mark embodies functional features, in order to allow general businesses to freely use such elements and promote fair competition, only the original creator may obtain a certain period of protection under the Patent Act, and no specific person may obtain long-term exclusive rights through trademark registration. The criteria for determining functionality are as follows:
the shape is necessary to achieve the use or purpose of the goods;
1. Whether the shape is necessary to achieve the use or purpose of the product;
2. Whether the shape is necessary to achieve a certain technical effect;
3. Whether the manufacturing cost or method of the shape is relatively simple, inexpensive, or superior.
The Intellectual Property and Commercial Court's Administrative Judgment 114-Xing-Shang-Su-Zi-3 (dated 31 July 2025), sets out the criteria for assessing the distinctiveness of 3D marks and underscores that the legislative purposes of the Patent Act and the Trademark Act differ, and that patent rights cannot serve as the basis for trademark registration.
II. Facts of the Case
The plaintiff applied for registration of a 3D trademark for a "tire 3D design" (Application No. 112007446; hereinafter "the disputed trademark") covering the designated goods in Class 8, namely "hand tools; hand-operated agricultural implements; hand-operated gardening tools." TIPO rejected the application on the ground that the disputed trademark would easily lead people to associate it with the shape of relevant parts of the designated goods, and thus lacks distinctiveness. The plaintiff subsequently filed an appeal, which was dismissed, and then plaintiff initiated this administrative litigation.
|
The Disputed Trademark Device |
|
|
II. The Grounds for Judgement
1. Lack of inherent distinctiveness
(1) The court disputed trademark comprises the external appearance of a vehicle tire, axle, rim, and spiral-like 3D panels; as a whole it depicts a "wheel." The tire axle is simply depicted with spiral lines, which is not significantly different from the general shape of wheel axles commonly used in the industry.
(2) The proportion and shape of the axle lines within the overall trademark, together with the irregular geometric tread patterns on the tire, are not, objectively, features that would particularly attract attention. The overall appearance readily leads people to associate it with the shape of parts of hand tools, agricultural implements, and similar goods.
(3) The distinctiveness of a trademark is unrelated to whether the applicant has invested significant research and development costs.
2. Insufficient evidence of acquired distinctiveness
The plaintiff submitted physical products and photos, marketing brochures, trade-show photos, a utility model patent certificate for a "mobile wheel for agricultural seats," and screenshots of statements concerning counterfeits. However, the plaintiff did not submit evidence such as sales volume, turnover, market share, or advertising volume for the trademark's use on the designated goods. Therefore, it cannot be proven that relevant consumers in Taiwan have recognized the disputed trademark as an indication of the source of goods, and thus it does not possess acquired distinctiveness.
3. Acquisition of patent rights cannot serve as the basis for trademark registration
The Patent Act aims to encourage and promote industrial development and to strike a balance between encouraging technological innovation and the interests of the public. Therefore, it only grants protection for a limited period, after which the relevant creations become resources freely available to the public. In contrast, the function of a trademark is to identify the source of goods or services, and the trademark owner may obtain perpetual protection by renewing the trademark right indefinitely after its expiration.
III. Conclusion
In practice, the distinctiveness of 3D marks is assessed under a strict standard. Only where the shape is highly unusual, markedly different from shapes customarily used in the industry, and sufficiently memorable to consumers will it be regarded as possessing inherent distinctiveness and thus be registrable. Otherwise, the applicant must submit sufficient evidence that the mark has been continuously and extensively used in the market, so as to establish acquired distinctiveness and obtain trademark registration.