Trademark

3D Products Modeled After Well-Known 2D Trademarks Constitutes Infringement

The Judicial Yuan conducted an Intellectual Property Law panel discussion months ago to discuss legal disputes in the courts’ trial practices. One of the issues settled at the panel discussion was whether or not a three-dimensional product resembling a registered two-dimensional trademark would constitute an infringement to that trademark. Behind the question was a split opinion regarding what type of use would constitute a trademark use. The panel voted for the opinion of trademark infringement.

        Opinions voted in the panel will be respected in future trials. The panel discussions hosted by the Judicial Yuan enjoyed praise from the relevant public because it helps to increase the exchange of legal opinions and to further improve the quality of trial adjudication. 

     Article 6 of the Trademark Act prescribes that the use of a trademark connotes “the utilization for marketing purpose of trademark on goods, services or relevant articles thereof, or the utilization through means of two-dimensional graphic, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark.” Courts holding negative opinions deem that manufacturing three-dimensional products to resemble a two-dimensional trademark is by no means using the trademark for marketing purpose and therefore is not within the definition of trademark use.

         An example case that was discussed refers to a “monkey logo” trademark registered in Class 14 for clocks and watches. The defendant manufactured three-dimensional clocks modeled after the said monkey logo trademark and sold them for profit. The owner of the trademark filed a trademark infringement lawsuit with the Intellectual Property (IP) Court, but the case was overruled because the Court found that making a trademarked logo into a three-dimensional product is not within the definition of trademark use.

However, courts holding affirmative opinion believe that such conduct should constitute a trademark infringement because the three-dimensional product modeled after a registered trademark logo would mislead the public as to the origin of such products or the possibility of a licensing relationship with the trademark owner. The panel voted for this opinion. The Taiwan Intellectual Property Office further elaborated that either the misleading nature or likelihood of confusion that the three-dimensional product would cause the public may still depend on the actual fame of the trademark. Therefore, it is highly likely that the panel’s opinion will only be applied to well-known trademarks.