In August 2013, ConA applied for the three-dimensional mark “eos spherical pattern” in class 03: cosmetics, etc., and class 5: medical vaseline, etc., The decorative design of its product packaging was devoid of distinctiveness, and there was likely to cause doubts over the scope of trademark rights after examining by the Intellectual Property Office. It should statement disclaimer.
This trademark wasn't disclaimers by ConA and Intellectual Property Office determined that the application wasn't to be registered in accordance with Article 29, Item 3 of the Trademark Law. ConA refused to accept and filed an administrative appeal. After being dismissed by the MOEA, ConA still refused to accept it. Then, ConA filed an appeal to the IP Court and transferred the trademark application to EOS PRODUCTS, LLC in litigation. Finally, EOS PRODUCTS, LLC obtained the trademark rights.
How was the trademark application that was originally rejected finally obtained the trademark right?
First, a good trademark must be distinctiveness. According to the "Trademarks and the standards for distinctiveness", "Trademark for distinctiveness" can be divided into inherent and acquired.
The former refers to the trademark doen't need to be used, it has distinctiveness; the latter refers to the trademark was devoid of distinctiveness. But the relevant consumers can recognize the trademark is the source of the goods or services after long-term and repeated use in the market. The trademark is distinctiveness.
“eos spherical pattern” is composed of "eos" and " spherical pattern”. There wasn't explanatory meaning from the words. It is just a packaging container for attracting the attention of consumers. According to general social concepts, It is difficult for consumers to think that it is a trademark. And it was devoid of inherent distinctiveness.
How to obtain acquired recognition for a trademark without inherent distinctiveness?
According to Article 29, Item 2, of the Trademark Law, a trademark is descriptive or devoid of inherent distinctiveness, it can be used by the applicant for a period of time. When the trademark has become the identification mark of the applicant’s goods or services in the transaction, it obtains "acquired distinctiveness " and the registration is approved.
Way to get acquired distinctiveness:
(1) Ways of use and used time of the trademark, and the usage of the same industr
(2) Sales volume, turnover and market share
(3) Advertisement volume, advertising costs and information of promotional activities
(4) Sales area, market distribution, sales bases or the display spaces
(5) Registration certificate and market research report of each country
(6) Other evidences
Other evidences that is identified distinctiveness would be examined with the case, and the evidences aren't limited to domestic data. In the case of foreign materials, it is still necessary to judge whether the domestic consumers know it.
eos spherical lip balm was put on the online auction in Taiwan in 2010. In 2011, there were blog introduction articles. In 2014, there were Turnover reports. From September 2014 to September 2015 , it had sold more than 410,000 pieces. More than 55% of related consumers said that they knew these were lip balm products, and more than 60% knew these were products of EOS PRODUCTS, LLC. Moreover, "eos spherical pattern" has been registered in the United States and China. According to the market research report provided by EOS PRODUCTS, LLC, it can be proved that the relevant consumers have known that the shape is related to the lip balm. Based on the above evidences, it should be able to prove that it is acquired distinctiveness.
Article 30, paragraph 1, paragraph 1 of the Trademark Law, it should not be registered only for the function of goods or services. According to the provisions of 3.2.4 of the “Non-Traditional Trademark Examination Standards”, for the specific considerations of functionality:
(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, cheap or better.
To sum up, the eos spherical shape isn't the only choice for lip balm products. Using the spherical shape as the outer packaging of the lip balm is not a necessary technology to achieve the function of the product. In addition, the manufacturing cost of the spherical shape is not lower in cost or simpler than the common products. Therefore, it should be recognized that the eos spherical lip balm isn’t functionality.
Therefore, Gold Keen thinks:
1. The registration of three-dimensional trademarks, like other types of trademarks, needs to be recognizable enough to indicate the source of goods or services so that consumers can distinguish them.
2. According to consumers' perception, the three-dimensional trademark is usually regarded as the shape of a product function or a decorative design. And it is less likely that it passes on the source of the goods or services, because the source of the goods or services can't be distinguished. There is no particularity, that is, it is not recognizable. Therefore, it proves that the recognition of the three-dimensional shape is more difficult than the flat trademark.
3. If the three-dimensional trademark is acquired identification, it is required that the applied goods or services have no functional or aesthetic function.
This is because the trademark right can be permanently protected by renewal. If a functional product design or feature can obtain a trademark registration, the industry can't use the function and technology, and can't achieve the purpose of "promoting the development of the industry", and it hinders the fair competition of the industry and makes the technology permanently monopolized. Obviously, it violates the Patent Law to encourage inventors to invent and create, give back the patent rights granted to inventors, and give a period of time the legislative intent to monopolize the protection of the technology, so functional trademarks cannot be approved for registration.
4. A logo that is devoid of distinctiveness at the beginning may not necessarily be able to obtain a trademark registration. After a long-term or extensive intensive publicity and use by the applicant, the logo has been connected with the product or service promoted in the minds of consumers, becoming the identification mark on the transaction. At this time, the mark has a trademark function and can be approved for registration due to the acquired distinctiveness.
