Newsletter
INFRINGEMENT OF THREE-DIMENSIONAL TRADE-MARKS
The question of whether, under the current Trademark Law, 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.
Recently, however, quite a number of courts have not been persuaded that use of a three-dimensional version of a trademark vio-lates the Trademark Law as currently in force. In a 2002 judgment, the Shihlin District Court stated explicitly that the definition of a trademark contained in Article 5 Paragraph 1 of the Trademark Law refers only to text, drawings, symbols, color combinations, or combinations of the above elements, and therefore trademark protection extends only to two-dimensional de-signs, not to three-dimensional appearance or shape. Accordingly, "use of a trademark" is limited to its use in two-dimensional form, and does not include three-dimensional versions of a mark.
Article 5 of the amended Trademark Law, which is due to come into force on 28 November 2003, names "three-dimensional form" as one of the protectable features of a trademark. But for a mark to be so protected, it is necessary to law-fully obtain registration of the three-dimensional mark. In other words, the questions of whether a registrant who has obtained registration of only a two-dimensional mark will be able to prevent use by others of a three-dimensional form of the mark, and whether, if what is registered is a three-dimensional mark, use of a two-dimensional form of the mark will constitute infringement, are likely to remain matters of considerable dispute even after the amendment comes into force, until they are clarified by ju-dicial practice.