TIPS^®  Taiwan Intellectual Property Special

Extended Protection for Three-Dimensional Presentation of a Mark

It has been an unsettled issue whether trademark protection of a 2-dimensional
mark may extend to three-dimensional presentations of the mark until recently the
Supreme Court in Taiwan rendered an opinion a few years ago, confirming that, under

Copyright Law, the three-dimensional presentation/expression of a two-dimensional
artistic or graphical work is a form of “reproduction” for the purpose of Copyright
protection, as long as the three-dimensional presentation simply presents the content
of the two-dimensional work.

In the past few years, there are several opinion handed down from Taiwan High
Court, recognizing trademark protection to cover three-dimensional presentation of a
two-dimensional trademark. The court stated that, although three-dimensional
trademarks were not registrable (before the 2003 Trademark Law Amendment), it did
not mean that the trademark protection should not be extended to cover threedimensional presentations of two-dimensional marks. The Court also indicated that infringement by a mark that is similar to a registered trademark of another shall also include infringement by three-dimensional products that are similar to a registered
trademark of another. Recently, a public prosecutor has indicted a retailer for sales
of unauthorized Snoopy plush dolls, by citing the opinion from Taiwan High Court
that extending trademark protection to cover three-dimensional presentations of
two-dimensional trademark is intended by the Trademark Law based on the literal
interpretation, legislation history interpretation and interpretation under the
comparative law principle of the Taiwan Trademark Law, and such protection shall
meet the expectation and legal common knowledge of the general public.

However, some courts believed that, in 1999, a draft of Trademark Law
Amendment was proposed to recognize the registrability of three-dimensional marks,
but the Legislative Yuan (the Congress in Taiwan) did not accept the proposal. The
courts then concluded that, while a three-dimensional mark is precluded from
exclusive trademark right, it is improper to extend the scope of protection to cover the
three-dimensional presentation after registration of the mark in two-dimensional form
because the exclusive trademark rights for the three-dimensional form has not been
accepted from the beginning by the Legislative Yuan.

After years of debates, this issue is finally settled by 2003 Trademark Law
Amendment, which recognized the registrability of three-dimensional trademarks.
By such registrations, trademark protection is now available to any figures, packing,
designs, product configuration, or any other three-dimensional symbols that
represents a company’s image.

Newly Passed Copyright Law Amendment
The Legislative Yuan (the Congress in Taiwan) passed the Amendment to the
Copyright Law on August 24, 2004. The major points of the Amendment are
summarized as follows:

1. Adding Anti-circumvention Provision
The Anti-Circumvention Provision is added to cover the “technology protection
mechanism” the copyright owners adopted to protect their copyright works. Without
the copyright owner’s consent, it is illegal to circumvent or break down the
technology protection mechanism.

2. Eliminating the Distinction between “Intent for Profit” and “Not-Intent for
Profit” for Criminal Penalties
Under the current provisions, copyright infringement that is intended for profits, or
copyright infringement that produces more than 5 illegal copies or the total amount of
infringement calculated by the market value of lawful copies exceeds thirty thousand
New Taiwan Dollars (about US$ 1000) are subject to severer criminal penalty.
From the past experience, the courts were inconsistent in determining the “intent for
profit” and the calculation of the illegal copies. To solve the problem once for all,
this amendment eliminates the distinction of “intend for profit” and the amount
requirements. Nevertheless, the court and the public prosecutor may still consider
the amount of illegal copies and profits made from infringing activities in determining
whether there is infringement. In other words, the amendment gives the judges and
public prosecutors discretion for de minimis offenses.

3. Increasing the Penalties for Manufacturing and Selling Pirated CDs
Among the Copyright Law violations, manufacturing and selling pirated CDs are
subject to the most severe criminal penalties in this countries. To stop such acts
more effectively, the amendment increases the minimal penalties from “detention” to
“sentence for 6 months.”

4. Clarifying Definition for Fair Use
This amendment includes “personal reference” into the scope of fair use. The
Legislative Yuan also requires that the Taiwan Intellectual Property Office should
assist the copyright owners and users to clarify the scope of fair use, with respect to
library copying, copying for educational purpose and online learning for educational
institutes, by December 31, 2004.

5. Suspending the Release of Alleged Copyright Infringement Goods at the
Custom.

The Custom is granted the authority to suspend the release of the goods that is
suspicious for copyright infringement. For the goods that is obviously suspicious for
copyright infringement from the appearance, the Custom may notify the copyright
owner to assist in identifying within the shortest time, e.g. export from air: 4 hours;
import from air or sea: one working day.