Taiwan: Proving secondary meaning with a survey

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Taiwan: Proving secondary meaning with a survey

According to Taiwan's trade mark examination practice, a three-dimensional mark in the form of a product packaging container is generally considered not inherently distinctive, and is registrable only upon proof of the secondary meaning acquired through long-term and extensive use. Without such evidence, the TIPO will refuse registration of the mark or require the applicant to disclaim the exclusive right to use the packaging container if there are distinctive word and/or device elements on the packaging container.

In practice, when examining evidence of use submitted for a three-dimensional mark, the TIPO takes the position that consumers will see the word and/or device elements on the packaging container, rather than the packaging container itself, as the identifier of the source of the product. Thus, even though the evidence submitted by the applicant could be voluminous, the TIPO may still deem such evidence not sufficient to prove the secondary meaning acquired by the three-dimensional mark.

The predecessor of EOS Products filed a trade mark application for a three-dimensional mark designated for use on cosmetics, lip balm, etc. The mark consists of the wording "eos" and a three-dimensional configuration of the packaging for the designated goods. The configuration is comprised of a spherical body with an indented portion on one side at the midpoint of the circumference. During prosecution, even though the applicant submitted evidence of use, the TIPO still rejected the application on the ground that the source identifier of the applicant's goods was the wording "eos" and the spherical packaging container was merely an ornamental design without having acquired secondary meaning.

After an unsuccessful appeal, EOS Products initiated administrative litigation before the IP Court. During litigation, in addition to the previously submitted evidence of use, EOS Products submitted reports on brand identity and brand awareness surveys launched in Taiwan. The surveys tested whether local consumers can recognise the spherical packaging, without the "eos" wording, as a source identifier of the relevant products, and the survey results showed that more than half of the interviewees recognised the spherical packaging as a source identifier.

The IP Court, holding that the survey reports were competent proof of acquired distinctiveness of the mark at issue, ruled in favor of EOS Products.

To increase the chances of getting a three-dimensional mark registered, the applicant may consider launching brand identify surveys in the local market in addition to gathering evidence of use.

hung.jpg

Julia YM Hung


Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw

more from across site and SHARED ros bottom lb

More from across our site

A group of five lawyers who joined Cleary Gottlieb say they want to help expand the firm’s IP litigation practice
As we build up to another busy year for the IP STARS rankings and our Managing IP Awards, we assess some of the major IP firms and trends in Germany
Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
The England and Wales appeals court handed down its judgment just seven working days after hearing the trademark dispute involving pharma company Merck
A host of law firms from across Europe and beyond helped bring the streaming technology dispute to a close
Hugues Derème, director general of the Benelux IP Office, unveils his vision for the region, how to improve IP awareness, and use of AI
A copyright win for AI firm Anthropic and a new executive order against law firm Jenner & Block were also among the top talking points this week
A principal at Schwegman Lundberg & Woessner explains how AI tools, including DeepIP, can position the firm to help clients
The firm explains why AI-empowered data analytics could make it a more efficient advocate for its clients
Gift this article