TIPS^®  Taiwan Intellectual Property Special

Trademark Fight for Striped Toothpaste

Since 1998, Colgate-Palmolive has acquired a series of striped toothpaste trademarks (refer to the example below), with different color combinations. Because the shape of striped toothpaste has been used by several toothpaste manufactures, e.g. Procter & Gamble (P&G), Unilever, GlaxoSmithKline (GSK), on the packing of toothpaste, invalidation actions against Colgate-Palmolive’s striped toothpaste marks were initiated, and followed by relevant administrative litigation.




At first, Colgate-Palmolive prevailed before the Appeal Board and the Taipei Administrative High Court (TAHC). However, from February 2003, the Supreme Administrative Court (SAC) started to hand down judgements, invalidating the registration of the striped toothpaste trademarks. It is the SAC’s opinion that, although the shape of striped toothpaste may vary, ordinary purchasers may easily conceive the appearance of the trademark at issue to be in the shape of striped toothpaste, based on common experience; the overall appearance of the design fails to produce an image that is so distinguishable that the ordinary consumers would recognize it as an indication of a specific product, and is not capable of distinguishing the plaintif’s goods from those of others. The mark lacks distinctiveness and therefore is not registrable.

Subsequently, the TAHC revoked three registrations of Colgate-Palmolive’s striped toothpaste trademarks in June and July 2003. In fact, it was not Colgate-Palmolive’s idea to use the shape of striped toothpaste on toothpaste packaging. There are similar designs on the toothpaste packaging of other brands, e.g. Aquafresh of GSK, Close-UP of Unilever. If Colgate-Palmolive were granted the exclusive right to use this shape, their competitors would have to stop using similar designs. It would be against the custom of the business, and cause disturbances in the marketplace. Furthermore, the striped toothpaste shape in the design is a natural phenomenon. Should the right to use the shape be monopolized by Colgate-Palmolive, other people in the same business would be excluded from using the design to which they are entitled to use in the way they are accustomed. This would be an undue restraint on the right of the competitors.