Newsletter
TOOTHPASTE DESIGN DRAW-INGS NOT DISTINCTIVE AS TRADEMARKS
Company A applied for registration of a series of toothpaste designs as trademarks for use on toothpaste. The designs incorporated the same drawing and differed only in their color combi-nations. The Intellectual Property Office (IPO) approved the applications and published them in the Trademark Gazette.
Company B filed several opposition actions with the IPO, citing the provisions of Article 5, Para-graph 1 of the Trademark Law. It asserted that the above trademarks were merely representa-tions of different colorations of toothpaste when squeezed from a toothpaste tube, and were not distinctive, having long been widely used on toothpaste goods. However, the IPO ruled against all these opposition actions. Company B filed administrative appeals against these rulings, but none of its appeals was upheld, and in each case it brought an administrative suit in the Taipei High Administrative Court. These cases were heard by different judges of the court, and had different outcomes. The majority of the judges held that the trademarks were not dis-tinctive and therefore not registrable, but one judge held that the mark concerned was distinc-tive and registrable. Each of the companies ap-pealed to the Supreme Administrative Court against the judgments that were unfavorable to it.
In order to arrive at a unified interpretation, the Supreme Administrative Court recently heard oral arguments in three of the cases. The Court rejected Company A's appeals, but in Company B's appeal it set aside the original judgment, and ordered the IPO to make a ruling upholding the opposition to the disputed trademark registration.
The Court's main grounds for the judgments were as follows: Considering the disputed marks from the point of view of general experience, their appearance was likely to lead purchasers to recognize them as representations of toothpaste squeezed from a tube. The shapes of toothpaste actually squeezed out might be long, short, pointed, rounded, flat, broad, or narrow to dif-fering degrees, and the disputed trademark de-signs did not cover all these possibilities. But taking into consideration the mode of use, con-sumers' awareness, and the goods designated for the marks' use, the disputed designs were none-theless undeniably images of squeezed out toothpaste, and were general, ordinary and ob-vious representations of toothpaste goods. The fact that all the disputed trademarks were named as "colored toothpaste designs" also supported the view that they did indeed have their origin in images of squeezed out toothpaste. The overall appearance resulting from the design was unlikely to cause consumers at large to immedi-ately recognize them as representing a brand of goods or the goods of a specific entity. Thus they were not sufficiently distinctive to identify the goods of such a brand or entity, and could not be used to distinguish such goods from the goods of other suppliers. Therefore they did not meet the conditions for registrability.