Due to the diversely developing commercial activities and the rapid changes in marketing medias and advertising designs, conventional trademarks no longer satisfy what the market demands. To protect a party’s rights and interests and to prevent unfair competition, three-dimensional, single color, and sound trademarks are added to the Trademark Act and entered into force on November 28, 2003.
Unlike conventional trademarks, three-dimensional, color, and sound trademarks are not generally taken by consumers as signs that distinguish the source of goods or services, but instead are often considered as either the goods themselves or purely functional or ornamental shapes or designs for the goods or services. For this reason, how to determine distinctiveness becomes an important section in the examination of these new kinds of trademarks. In determining distinctiveness of these new kinds of trademarks, factors such as consumer recognition, characteristics of the goods, and use in the relevant consuming market must be considered. Three-dimensional, color, and sound trademarks are distinctive only if they are recognized by consumers as signs that distinguish the source of goods or services.
Moreover, Article 17-2 of the Trademark Act provides: “A trademark shall be expressed in a visually perceptible representation.?To meet this requirement, a three-dimensional, color, and sound trademark sought to be protected should be represented graphically and, to provide sufficient notice to the public, the representation must be clear, precise, easily accessible, and objective.
In addition, to be registrable, a three-dimensional shape is required to be non-functional. This is to prevent a technical and functional creation, such as the subject of a patent, from being perpetually protected under the Trademark Act after its patent protection expires, and that such perpetual protection will adversely affect the innovation of techniques and fair competition order in the market.
The following guidelines will explain the principles for examining three-dimensional, color, and sound trademarks.

The following will first introduce what a three-dimensional trademark means and the possible types of three-dimensional trademarks, and then explain the criteria for determining the distinctiveness and non-functionality of a three-dimensional trademark. An explanation of the relationship of three-dimensional trademarks to design patent rights and copyrights will be given in the last part.

Definition

According to Article 5-1, a three-dimensional shape may be registered as a trademark. Three-dimensional trademarks are trademarks with three-dimensional shapes that have length, breadth, and height and enable relevant consumers to distinguish different sources of goods or services. To be registrable, a three-dimensional trademark must be distinctive, non-functional, and meet other requirements for a trademark.

Application

Rule 11-1 of the Trademarks Regulations provides: “In applying for a three-dimensional trademark registration, the applicant shall submit an application containing an indication stating to that effect, a drawing of the trademark in three-dimensional form and a description of the trademark.?Accordingly, in an application to register a three-dimensional trademark, the written application must indicate and include a drawing of the trademark in three-dimensional form, as well as a written description.
If an applicant applies to register a three-dimensional trademark by using the application form provided on the Registrar Office’s website, it will be regarded as seeking to register a three-dimensional trademark. In the case of an application which is filed by using an application form for a conventional trademark provided on this Office’s website, if it is not stated in the application that the trademark the applicant seeks to register is a three-dimensional trademark, but it can be presumed from the attached drawing and other objective evidence, such as a perspective drawing or the description of the trademark, that the trademark the applicant seeks to register is a three-dimensional trademark and the application form was used in error, the applicant will be notified to clarify that and a correct application form must also be submitted.
To show each feature of the three-dimensional trademark sufficiently and clearly to permit proper examination of the trademark, the applicant may submit at the same time, a maximum of five additional perspective drawings or samples in different views but with the same scales. The Registrar Office may also, when it deems necessary, require the applicant to submit such materials. (See Rule 11-2 of the Trademarks Regulations.) In a case where a main three-dimensional drawing is attached to the application in the "Trademark Drawing" column, and additional perspective drawing in different views, are submitted at a later date, if the later submitted perspective drawings are covered by the original main three-dimensional drawing, such later submission is taken as a supplement to the original drawing, and it will not affect the filing date of the application. However, if the perspective drawing submitted at a later date shows a three-dimensional trademark different from the original one, it is an alteration of the trademark and shall not be allowed according to Article 20-2 of the Trademark Act that "no changes shall be made on the proposed trademark and the designated use on goods or services thereof after an application has been filed."
The Trademarks Regulations do not permit the applicant to submit the drawing of a three-dimensional trademark by photographs, because scanned photographs tend to blur easily and do not show up clearly when they are printed in the Trademark Gazette. Besides, photographs are not easy to paste in place, and may fall off easily, too. Therefore, a photograph of the drawing of a three-dimensional trademark will not be accepted. The examiner will notify the applicant of this defect and set a time for correction of the defect.

Without a clear description of the trademark claimed, there may be questions raised about the scope of the applicant's claim and it may be difficult to determine the distinctiveness of the trademark, as well as to search the database for any conflicting trademarks on the Register. A three-dimensional trademark combined with word(s), design(s), symbol(s), and/or color(s), in particular, is more required to be clearly and specifically described. For this reason, the description of a trademark plays a very important role in helping to decide the exact nature of the trademark claim. The applicant will be required to file a further description if it is in the opinion of the examiner that the description of the trademark does not sufficiently nor specifically describe the three-dimensional trademark claim.
In the case where the three-dimensional drawing is particularly clear and all features of the trademark are obvious, a briefer description of the trademark will be acceptable. For example: "The trademark in this case is a three-dimensional trademark consisting of a spherical shape of a perfume bottle as shown in the representations attached to the application form."
If not, the trademark should be described in detail. For example:
"The trademark in this case comprises the configuration of a perfume or cologne bottle and cap therefor e , both having a three-dimensional 'V' design as shown in the representations attached to the application form. "
Moreover, Rule 11-3 of the Trademarks Regulations provides: "If the three-dimensional shape specified under the preceding two paragraphs includes some portion for which rights have not been claimed, the portion claimed for rights shall be depicted in solid lines, while the portion not claimed for rights shall be depicted in dotted lines with a disclaimer of the right to exclusive use of that portion."Accordingly, in an application to register a three-dimensional trademark, the scope of the claimed or disclaimed exclusive right to use the trademark must also be specifically described. For example, it may be specified in the "Description of Trademark" column that, "As shown in the three-dimensional drawing in the application, the trademark in this case consists of a three-dimensional shape of a rooster used on the roof of a car appearing in dotted lines," and in the "Disclaimer" column that the portion indicated by dotted lines is disclaimed. In the case of a three-dimensional shape containing a disclaimed portion, if such portion is indicated by solid lines rather than by dotted lines, it is a correctable defect. The correction of this defect will not affect the filing date of the application.
Furthermore, the description of the trademark should appear on the application when filed because the description will be published in the Trademark Gazette and marked on the certificate of registration. If a description of the trademark does not appear on the application, the examiner will notify the applicant and set a time in which the applicant must submit a description of the trademark. In addition, the description of the trademark and the attached three-dimensional drawing must be consistent and can be cross-referenced with each other. In the event that the description of the trademark is inconsistent with the attached three-dimensional drawing, the attached three-dimensional drawing should prevail. If necessary, the examiner will notify the applicant and set a time in which the applicant must correct the defect. In such cases, it is permissible for the applicant to put forward a proposal to amend the description of the trademark, so that it is consistent with the attached three-dimensional drawing. This amendment will not affect the filing date of the application.

Types

The following are possible types of three-dimensional trademarks:

signs with three-dimensional shapes (three-dimensional shapes other than those of the goods or those of the packaging of the goods);

the decor of the place where services are performed; and

a combination of any word, design, symbol, or color with a three-dimensional shape.

Judg ment of ing the Distinctiveness of A a Three-dimensional Trademark

Like two-dimensional signs, a three-dimensional shape for which registration is sought must be distinctive. However, it is more difficult for a three-dimensional shape than for a two-dimensional sign to acquire distinctiveness, particularly when the three-dimensional shape is the shape of the goods or their packaging. This is because the shape of the goods or their packaging is inseparable from the goods themselves, and is often recognized by consumers as a shape providing functional or ornamental features of the goods, rather than as a sign distinguishing the source of the goods. Therefore, the evidence required to prove the distinctiveness of a three-dimensional shape is stricter than that of a two-dimensional sign. In addition to consumer recognition, the characteristics of the goods must also be considered. If it is common for the goods, such as toy figures, lights and lamps, clothing, to be available in a wide variety of designs, consumers will often regard the shapes of these goods as ornamental patterns or the styles of the goods. Generally, consumers of daily goods tend to focus their attention on the sign displayed on the products, not the shapes of the products. Therefore, consumers of daily goods usually do not regard the shape of a daily good as a sign that distinguishes the source of that good. The characteristics of the goods also affect the degree of attention consumers would pay when selecting the goods. Generally speaking, consumers pay higher attention to goods that are more expensive, professional, or those that are durable goods, such as high technology products and medical products. The higher the attention they pay to these products, the higher the attention they will pay to the three-dimensional shapes of these products, too, and the greater possibility of the shapes serving as an indication of source. Cheap daily goods or non-durable goods, on the contrary, such as soaps, receive a lower degree of attention from consumers. The three-dimensional shapes of these products can hardly serve as an indication of source unless they are so unique or eye-catching that they easily leave an impression in the minds of consumers and are recognized by consumers as a sign that distinguishes source of the goods/services. The use in the relevant consumer’s market is also an important factor to be considered. A three-dimensional shape loses its distinctiveness and becomes incapable of functioning to distinguish source if it is commonly adopted by businesses in the relevant industry. As discussed above, in some lines of business, it is common that goods are available in a wide variety of shapes; such various designs of shapes are often regarded by consumers as ornamentation rather than signs that distinguish the source of the goods and, therefore, are not distinctive.
The following will explain the judgment of the distinctiveness of each of the possible types of three-dimensional shapes:

If the shape of the goods is common to the trade, it is an attribute of the goods which is inseparable from the goods, and it generally will not be regarded as having the function of distinguishing the source of the goods. A shape like this is not inherently distinctive as a trademark, and registration thereof would violate Article 23-1(1) of the Trademark Act. Moreover, because a shape described above often indicates merely the shape of the goods, too, registration thereof would also violate Article 23-1(2) of the Trademark Act. However, if the applicant provides evidence of use demonstrating that the shape, at the date of filing, did distinguish the applicant's goods/services from those of other traders, this shape will be deemed to have acquired distinctiveness and may exceptionally be registered under Article 23-4 of the Trademark Act. Examples of evidence of use include: consumer survey results showing that consumers have come to recognize the shape of the goods as a source identifier of the goods, advertising expenditures, advertisements placing emphasis on the shape of the goods being a feature thereof and serving as a source identifier of the goods (i.e., use of advertising words or phrases such as "please identify the shape of this product"), the length of time the shape of the goods has been used, the exclusivity, and how well the goods are sold.

If the shape of the goods is not commonly used in the relevant consumer’s market but instead it is so unusual and memorable that in consumers?concept, it is separable from the product and serves primarily as a designator of origin of the product rather than a mere ornamental design. Since the shape is capable of functioning as a trademark that indicates the source of the goods, it is an inherently distinctive product design. However, it should be noted that a special shape of a product cannot function to distinguish goods, and it lacks distinctiveness if it attracts consumers to buy the product due to its aesthetic features. In addition, as discussed earlier, in some lines of business, it is common that goods are available in a wide variety of shapes, such as toys in Class 28 and lights and lamps in Class 11. Generally, consumers will regard such design of shapes as ornamentation. Therefore, the shape of the goods, even though it is not commonly used in the relevant consumer’s market, can hardly become distinctive since it is easily regarded by consumers as an ornamental design of the goods rather than a source identifier of the goods.

The shape of the packaging of the goods is inseparable from the goods themselves; therefore, the principles used for the shape of the goods when considering and judging distinctiveness should apply to the shape of the packaging of the goods as well. Moreover, "the shape of the goods" specified in Article 23-1(2) of the Trademark Act should be interpreted to include “the shape of the packaging of the goods.?That is to say, a trademark consisting merely of the shape of the packaging of the goods that is commonly used in the relevant consumer’s market cannot serve as a source identifier of the goods because such shape lacks distinctiveness and indicates merely the packaging of the goods. According to Article 23-1(1) and Article 23-1(2) of the Trademark Act, the shape of the packaging of the goods cannot be registered.

Signs with Three-Dimensional Shapes (Three-Dimensional Shapes Other Than Those of the Goods or Those of the Packaging of the Goods)

These refer to any three-dimensional shape that is not related to the goods or the packaging of the goods. The distinctiveness thereof is judged by the same criteria that apply to two-dimensional trademarks. Signs with three-dimensional shapes are distinctive as long as they enable consumers to identify the source of the goods or services.

The Decor of the Place Where Services Are Performed

The decor of the place where services are performed is the packaging of a business, and the criteria for judging its distinctiveness is the same as those applying to the shape of the packaging of goods. Moreover, "the shape of the services" specified in Article 23-1(2) of the Trademark Act should mean the packaging of a business. A common decor lacks distinctiveness and indicates merely the packaging of a business. An application therefor should be rejected under Article 23-1(1) and Article 23-1(2) of the Trademark Act.

A Combination of Any Word, Design, Symbol, or Color with A Three-Dimensional Shape

According to market practice, the shape of the goods or the shape of the packaging of the goods is often used in combination with word(s), design(s) and/or color(s), giving consumers a visually unitary impression. The judgment of the distinctiveness of such a trademark, therefore, should be made by viewing the trademark as a whole. Accordingly, in the case of an application for a three-dimensional trademark in which the shape of the goods or the shape of the packaging of the goods lacks a distinctive feature, but with the added word(s), design(s) and/or color(s), the entire trademark is a distinctive three-dimensional shape, then registration should be granted, provided that the non-distinctive shape of the goods or the non-distinctive shape of the packaging of the goods must be disclaimed under Article 19 of the Trademark Act and Rule 11 of the Trademarks Regulations. If the added word(s), design(s) and/or color(s) lacks/lack a distinctive feature, too, the application must be rejected under Article 23-1(1) of the Trademark Act since the entire trademark is non-distinctive.

Non-Functionality of Three-Dimensional Trademarks

Article 23-1(4) of the Trademark Act provides: “A trademark application shall be rejected if the proposed trademark is a three-dimensional shape of the goods or packaging thereof and is indispensable for performing the intended function(s).?This article was enacted to preclude any party from acquiring the registration of a three-dimensional shape of goods or their packaging that is essential to the use or purpose of the article or needed to achieve a particular technical result or resulting from a comparatively simple, cheap method of manufacture, such that the use of that three-dimensional shape would give the applicant a competitive edge in the market of competing goods of the same type. To prevent impact on fair competition among businesses in the relevant industry and to facilitate fair competition by allowing fair use by most business operators, such three-dimensional shape should be considered indispensable for performing the intended function. The inventor may seek to obtain a limited period of protection under the Patent Act only. As stated above, a monopoly by a single party on a three-dimensional shape of goods or of their packaging that is functional and is needed by businesses in the relevant industry would materially affect the rights and interests of those in the same business and result in an unfair result. For this reason, a trademark which performs a function cannot be registered, even if it has obtained trademark distinctiveness through long time of use.

Factors Considered In Judging Functionality

Factors that may be considered are as follows:

"Whether the shape is essential to the use or purpose of the article" means that there are no other alternative shapes the competitors may choose to use, and the shape is needed to fulfill the purpose of the article. For example, the shape of a circle is the only choice of shape for a car wheel; therefore, circular configuration cannot be registered as a trademark for car wheels to be exclusively used by one party. Moreover, to perform the function of sewing and making clothes, a sewing needle must have a sharp point at one end and an oval hole at the other end for a thread to go through. As this shape is necessary for a sewing needle to fulfill the purpose of sewing or mending clothes, it is a shape that is indispensable for performing the intended function. An application for registration of such a shape must be rejected because a monopoly on such shape by a single party would materially affect fair competition in the market.

Whether the shape is needed to achieve a particular technical result

For example, the shape of vanes in a fan is indispensable for creating a particular air flow pattern and there is not yet an alternative shape that can serve to achieve the same technical result. Therefore, an applicant cannot seek to register the shape of vanes for fans; an application for such shape would violate Article 23-1(4) of the Trademark Act. However, if the three-dimensional shape of the designated goods has some functional features, but if viewed from the angle of the practical function of the goods, the function is not essential and can be performed in a number of ways, then the shape is not indispensable for achieving a particular technical result. Moreover, the issue of whether a three-dimensional shape is indispensable for achieving a particular technical result may be evaluated by taking into account, among other criteria, whether a patent or a utility model has been obtained for the shape. This is because the existence of the patent or utility model rights may indicate that the shape has a practical function, and thus may serve as prima facie evidence of the fact that the shape is indispensable for achieving a particular technical result. Additionally, if the applicant has emphasized the function of the three-dimensional shape or that the shape is indispensable for achieving a particular technical result in its advertising or promotional activities, this fact may also be used as supporting evidence when judging whether the three-dimensional shape is indispensable for achieving a particular technical result.(3) Whether the shape results from a comparatively simple, cheap method of manufacturing or has an engineering advantage, resulting in superior performance If a shape results from a comparatively simple, cheap method of manufacturing or has an engineering advantage and resulting in superior performance, registration of the shape as a three-dimensional trademark, which will confer on the applicant a monopoly in relation to the use of the trademark, would result in unfair competition and materially affect public benefits, because other businesses, in order not to infringe the trademark, will have to increase their manufacturing costs or adopt a comparatively difficult or inferior method of manufacturing other shapes, which will cause a waste of social and economic resources. Therefore, Article 23-1(4) of the Trademark Act should apply to a shape like this for being "indispensable for performing the intended function." For example, simple extruded or cut shapes for biscuits, such as discs or rectangles.
One thing that particularly needs attention is that judgment of functionality is not inflexible; it changes with time, when technology advances, as well as when the market changes. In the case of an application for registration of a three-dimensional trademark which consists of not only a shape with functional features, but also other features, and in which the trademark is distinctive as a whole, if it is obvious that the applicant has no intention to monopolize that functional portion and if viewed from the angle of the practical function of the goods, that function is not essential, the trademark should still be approved for registration, even though a portion thereof has functional features. For example, a wheelie trash can shaped like a lighthouse is functional but the functional feature is not essential so far as the practical function of the trash can is concerned. Also, it is obvious that the applicant has no intention to monopolize this functional portion, and the shape of the lighthouse is not a basic shape of a trash can. Thus, the shape of the trash can as a whole may still be registered, and registration would not give the owner rights to the functional features of the trash can.

A three-dimensional trademark shall not violate any of the provisions set forth in Article 23-1 of the Trademark Act, which provides grounds for refusal. For example, a three-dimensional trademark cannot comprise the portrait of the President.

The Trademark Act prohibits registration of matter which is indispensable for performing the intended function, largely because a technical and functional creation should be protected by the patent system and, to foster technological development, the technique can be freely used by anyone after the patent expires. A design is a creation of an article in its shape, pattern, color, or any combination thereof, which appeals to the eye; it is not a creation that requires techniques. Therefore, the possibility that a design will affect fair competition in the marketplace is lower than a utility model or a patent that has a practical function. For this reason, a three-dimensional shape may be protected under both Trademark Act and Patent Act. However, it is important to note that to be protected as a trademark, the configuration of an article must function to distinguish the source of the goods. In addition, although the acquisition of design rights in a three-dimensional shape gives the owner the right to exclude others from using that three-dimensional shape during the patent term, it does not necessarily mean, if the three-dimensional shape is non-distinctive originally, that the shape has acquired distinctiveness. The distinctiveness of a three-dimensional shape is not a requirement for design protection. In other words, a non-distinctive three-dimensional shape may be protected as a design for being creative, but it does not thus acquire distinctiveness and trademark rights unless the owner of the design proves that the non-distinctive shape of the product, after being used by the applicant, has become a sign that identifies the applicant's goods in the course of trade, and can be relied upon to distinguish the goods from those of others. If that is the case, the shape is deemed to have acquired secondary distinctiveness, and may thus be registered under Article 23-4 of the Trademark Act.

The Copyright Act of the Republic of China was enacted to protect the rights and interests of authors with respect to their works, balance different interests for the common good of society, and promote the development of national culture. (See Article 1 of the Copyright Act.) It serves purposes distinct from those of the Trademark Act. Works have a wide range of uses, including being used as a trademark to identify the source of goods or services. Therefore, if the shape of a three-dimensional trademark meets the requirements for protection under both the Trademark Act and the Copyright Act, it may be legally protected as a trademark as well as a copyright.

A color trademark is a trademark consisting of one or more colors and where the color in and of itself is distinctive enough to identify the source of the goods or services. Color trademarks do not include composite trademarks comprised of color(s) combined with word(s), design(s), and/or symbol(s). Accordingly, a two-dimensional design with a fixed shape and with color(s) applied thereto should be taken as a design trademark, rather than a color trademark. Color trademarks and design trademarks are two different types of trademarks.

Rule 9 of the Trademarks Regulations provides: "In applying for a color trademark registration, the applicant shall submit an application with an indication stating to that effect, and specifying the color(s) along with a relevant description; the trademark set forth under the preceding paragraph may appear, in dotted lines, the manner, placement or context in which the trademark is actually applied on the designated goods or services. 'Dotted lines' under the preceding paragraph do not belong to part of the color trademark." Accordingly, in an application to register a color trademark, the written application must so indicate and show the color, and the color should be described in the application. To define more specifically the color sought to be protected, particularly a single color, the applicant may choose to define the color(s) more precisely by the use of a recognized color matching system. Take the following as an example, "The trademark consists of the color GREEN, specifically identified as PMS 348C, applied to the cap of a container as shown in the representations attached to the application form. The cap of a container indicated by dotted lines is not part of the trademark." As stated earlier, the description of the trademark should appear on the application when filed because the description will be published in the Trademark Gazette and marked on the certificate of registration. Additionally, according to Rule 9-2 of the Trademarks Regulations, in an application for a color trademark, the applicant may use dotted lines to indicate where and how the color is actually used on the designated goods or services. If no dotted lines are used, a detailed written description of where and how the color is used should be submitted for the Registrar Office to determine whether the color trademark claimed is distinctive and to determine the scope of the applicant's claim.
In addition, the description and the pictorial representation of the color trademark should together clearly define all the details which constitute the trademark, and they should be consistent and can be cross-referenced with each other. In the event that the description of a color trademark is inconsistent with the color shown in the application, the color shown in the application shall prevail. If necessary, the examiner will notify the applicant and set a time in which the applicant must correct the defect. It is also permissible for the applicant to put forward a proposal to amend the description of the color trademark, so that it is consistent with the color shown in the application. Such amendment will not affect the filing date of the application.

As stated earlier, in applying for a color trademark registration, the applicant shall describe the color and may also use dotted lines to show the manner, placement or context in which the trademark is actually applied on the designated goods or services. (Rule 9 of the Trademarks Regulations.) In the case where the color trademark is clear and concise, a briefer description of the trademark will be acceptable. For example, "The color trademark in this case consists of the colors red, white, and blue from the top down as shown in the representations attached to the application form." If a color trademark is intricate in nature, a detailed description thereof is required. Two examples are, "The trademark consists of the colors red, white, and blue in undulating stripes from the top down, at a ratio of 6:4:15, used on the surface of the container of the goods as shown in the representations attached to the application form. The shape of a container indicated by the dotted lines in this color trademark is not part of the trademark," and, "The trademark is a color trademark, which consists of two colors on a cylinder, the upper portion being copper and the lower portion being black. In addition, the shape of the cylinder indicated by dotted lines is not part of the trademark."

A color trademark has a lower degree of inherent distinctiveness because color, a single color in particular, is usually perceived by consumers as ornamental. Therefore, to be registrable as a trademark, a color trademark, like other kinds of trademarks, must be distinctive enough for consumers to identify the source of the goods or services.
Generally speaking, a single color is recognized by consumers as mere ornamentation, and the number of colors that are visible to the naked eye is limited. Therefore, a single color does not have inherent distinctiveness. To be registrable as a trademark, a single color must be proved to have acquired distinctiveness. In other words, the applicant must provide evidence of use demonstrating that the single color, at the date of filing, did distinguish the applicant's goods/services from those of other traders. Under such exceptional circumstances, a single color trademark may be registered under Article 23-4 of the Trademark Act. However, registration will be refused under Article 23-1(1) of the Trademark Act if the color trademark lacks distinctiveness.
Combinations of colors may have a greater degree of inherent distinctiveness than a single color. Therefore, combinations of colors could be registered without the need for evidence of use to prove that the combination of colors have acquired distinctiveness, if it is inherently distinctive and may be relied upon by consumers to identify the source of the goods or services. But there's no denying that it is more difficult for a trademark consisting of two or three colors to be inherently distinctive than a design trademark.
Moreover, according to Article 23-1(2) of the Trademark Act, a trademark application shall be rejected if the proposed trademark represents the shape, quality, function or other descriptions of the goods or services. The intent of this article is to avoid a monopoly by one party on the shape, quality, function, or other descriptions of a particular good, which will materially affect the rights and interests of businesses in the same industry and lead to an unfair result. Registration of a trademark that represents the shape, quality, function or other descriptions of the goods or services is also contrary to the requirement for a trademark to be distinctive enough to be recognized by purchasers as a sign identifying goods or services and be relied upon to distinguish the goods or services from those of others. For example, the color white is the natural color of milk; therefore, the use of the color white for milk is descriptive of the designated goods. The use of the color black for solar energy collectors, and the use of the color silver for heat-insulated panels for buildings are descriptive of the function of the goods. Also, the use of the color red or yellow on tomato-, strawberry-, or lemon-flavored foods will be considered descriptive of the taste of the designated goods. To preserve public benefits and in view of the trademark distinctiveness discussed above, these colors are all unregistrable under Articles 23-1(1) and 23-1(2) of the Trademark Act.

Evidence of use for color trademarks

The standard for evaluating the evidence of use for a single color should be stricter than that of combinations of colors, since a single color is basically not inherently distinctive. It is easier to prove the distinctiveness of a color trademark if the applicant emphasizes in the advertising or marketing that the color is used as a trademark. For example, the applicant may refer to the color of the goods in the advertising by using the phrases "please identify this unique color," "please look for this attractive color," "look for the orange box," or "unique color." In addition, the duration and extent of use of the color on the designated goods, how well the goods are sold, the advertising expenditures, and consumer surveys are also factors that can be considered when determining whether the color at issue is distinctive or not.

Generic color marks refer to colors that are commonly seen by the public due to common use by the relevant industry and therefore have been customarily used by the industry and are widely known to the public. Generic color marks are unregistrable under Article 23-1(3) of the Trademark Act. Since a monopoly on a generic color by a particular party would result in unfair competition and materially affect trade order, a generic color mark should not be approved for registration. Some examples are as follows: The color yellow is a common color for taxis; therefore, no one shall be afforded the exclusive right to use the color yellow on cars. Also, the color red is commonly used for a hazard warning sign; therefore, no one shall be afforded the exclusive right to use the color red for medical services. Moreover, as a monopoly on a generic color by a particular party would result in unfair competition and materially affect trade order, and because a generic color mark cannot function as a sign identifying goods or services through the applicant's use, the provisions of Article 23-4 of the Trademark Act do not apply to generic color marks.

A sound trademark refers to a sound that is distinctive enough for relevant consumers to distinguish the source of the goods or services. Examples include: a distinctive advertising jingle, a melody, a human voice, a chime, or a cry of an animal.

Rule 10 of the Trademarks Regulations provides: "In applying for a sound trademark registration, the applicant shall submit an application containing an indication stating to that effect, and the trademark shall be represented by musical score, numerical musical score or a written description. In addition, a CD recording of the sound shall be submitted. In providing the musical score or the numerical musical score, a written description shall also be enclosed." Accordingly, in an application to register a sound trademark, the written application must so indicate and the sound should be represented by musical score or numerical musical score, along with a description of the sound. A compact disc recorded with the sound should also be submitted. In the case of a sound trademark not capable of representation by musical score or numerical musical score the application may simply contain an adequate description of the mark, and a compact disc recorded with the sound. In addition, a sound trademark distinguishes the source of goods or services through the human sense of hearing; therefore, the musical score or numerical musical score, the accompanying description, or the purely written description of the sound trademark must be consistent with the sound recorded on the compact disc and can be cross-referenced with each other, making clear what exactly is sought to be protected.

According to Rule 10 of the Trademarks Regulations, a sound trademark may be represented by musical score or numerical musical score, with a relevant written description, or purely by a written description of the sound.

Description of a A Sound Trademark by a A Musical Score with A a Relevant Description Thereof

<01>The musical score:

"The trademark is a sound mark. It consists of the spoken letters 'AT&T' superimposed over musical sounds in the key of C major, namely, the melody notes Fa, Si flat, So and Do and the two accompanying chords, the treble notes Fa, Si flat, Do and the bass note Fa as rendered in the compact disc accompanying the application."

For example :
"The trademark is a sound mark. It consists of the sound of two steps taken by a cow on pavement, followed by the sound of a cow mooing (clip, clop, MOO) as rendered in the compact disc accompanying the application. "

A sound trademark distinguishes the source of goods or services through audio rather than visual means. However, the distinctiveness of a sound trademark is judged by the same criteria that apply to other kinds of trademarks--the sound must be distinctive enough for consumers to recognize it as a sign that identifies the source of goods or services and to be relied upon to distinguish the goods or services from those of others. Accordingly, a complete song or a lengthy piece of musical notation such as the complete score of an orchestral or piano piece is non-distinctive, since general consumers would not regard it as a sound that distinguishes different sources.
An application for registration of a sound that is non-distinctive should be rejected under Article 23-1(1) of the Trademark Act. However, if the applicant provides evidence of use demonstrating that the sound, at the date of filing, did distinguish the applicant's goods/services from those of other traders, it may be registered under paragraph 4 of the same article.
Moreover, if a proposed trademark consists of a sound that is generated during the normal operation of a machine or a device, such as the sound of a motorbike engine and the clicking sound of a camera, it is a sound that represents the quality, function or other descriptions of the goods or services on which it is used. The use of such a sound as a trademark on vehicles, cameras or on the selling or repair services of vehicles or cameras is descriptive of the sound of the goods during their normal operation and lacks distinctiveness. Based on considerations of the benefit to the public and the required distinctiveness, such sound is unregistrable under Article 23-1(1) and Article 23-1(2) of the Trademark Act. This prevents the consequences that other businesses in the relevant industry will have to adopt a more expensive approach, rather than a normal manufacturing process, to produce their goods.

Generic sound marks refer to sounds that are familiar to the public and are commonly used in the industry as a result of common use by relevant businesses. Generic sound marks are unregistrable under Article 23-1(3) of the Trademark Act. Since a monopoly on a generic sound by a particular party would result in unfair competition and materially affect trade order, a generic sound mark should not be approved for registration. Some examples are as follows: The "Good Night Song sung by the singer Fei Yu-Ching" is a song commonly played by department stores before close time as a means of reminding customers that they are going to close soon; therefore, no one shall be afforded the exclusive right to use the song in connection with department store service. The siren of an ambulance indicates an emergency; therefore, no one shall be afforded the exclusive right to use the sound for medical services. "The Maiden's Prayer" is the sound from a garbage truck during a collection run; therefore, no one shall be afforded the exclusive right to use the sound for cleaning services. "Wedding March" is the sound commonly used at wedding ceremonies; therefore, no one shall be afforded the exclusive right to use the sound for wedding services or wedding cakes. Moreover, as a monopoly on a generic sound by a particular party would result in unfair competition and materially affect trade order, and because a generic sound cannot function as a sign identifying goods or services through the applicant's use, the provisions of Article 23-4 of the Trademark Act do not apply to generic sound marks.