A Comparative Study on Product-Packaging Trademark Law: Current Judicial Attitudes in Taiwan and the United States

Introduction: The Kose Case in Taiwan
On November 6, 2014, the Intellectual Property Court of Taiwan, which was erected on August 1, 2008 after Taiwan joined the World Trade Organization on January 1, 2002, reversed an important case concerning the trademark of Medicated Kose Sekkisei [Lotion]. The ruling in Kose Corporation v. Intellectual Property Office, 智慧財產法院 [Taiwan] [Intellectual Property Court] Nov. 6, 2014, No. 83 serves as a good representation of current judicial attitudes of the Intellectual Property Court of Taiwan toward 3D and color trademarks.
On December 27, 2011, Kose Corporation (“Kose”) filed “Medicated Kose Sekkisei (3D MARK)” (“Kose Sekkisei”) [lotion] to register a trademark designated for use under Category 3: “Cosmetics, fragrance, cologne, moisturizing lotion, moisturizer cream, … eyebrow pencil, nail polish, lotion, blush, body soap, soap …” under the appendix of Article 13 of the Enforcement Rules of the Trademark Act of Taiwan of that time. The Taiwan Intellectual Property Office (“TIPO”) denied this application on the basis that “the three-dimensional shape and color of the bottle are commonly used by the [cosmetics] industry, thus bearing no distinctiveness, and even inviting the possibility of confusion between trademark claims. The plaintiff petitioned for review of the subsequent order of TIPO, and the court affirmed its denial of Kose’s application for trademark. 
The Intellectual Property Court of Taiwan reversed the ruling and pointed out that in accordance with Article 18 of Taiwan’s Trademark Law, “A trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, images, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. The term ‘distinctiveness’ used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings.” Under this rule, a mark must be distinctive to be registered. However, it is harder for consumers to identify the source of products with non-traditional trademarks like colors, 3D shapes, motions, holograms, or sounds upon first sight [as compared to traditional trademarks like words and images]. Nevertheless, Kose’s product packaging, which combines a “3D shape” and “color” mark, was considered distinctive based upon the following reasons:
1.Inherent Distinctiveness

• Shape: The bottle has a flat front and back sides, while the left and right sides are elliptic. Compared to its competitors, which traditionally adopted cylindrical, elliptic cylindrical, cone, and elliptic cone shapes in their packaging, Kose has adopted an impressive packaging form that is inherently distinctive.
• Color: The translucent dark blue which becomes translucent when struck by light, conveys a specific aesthetic feel to consumers.
• Symbolization of the combination of colors and shapes: “Kose Sekkisei” using the meaning of its name, adopted “snow” for its brand image. The blue bottle with white words topped by a white cap rimmed by a silver mirrored band symbolize the blue sky, snowfield, and the round silver moon. Such symbolism in the design makes the product packaging “inherently distinctive”.

2.Acquired Distinctiveness

• Sales: Kose Sekkisei has annual sales of more than 300 million [New Taiwan dollars]. BEAUTY magazine reports it to be the number 5 basic skin care product, while Marie Claire Magazine reports it to be the number 1 product in the skin brightening product category.
• Commercials and advertisements: Kose has spent vast sums of money to hire celebrities to endorse its products. There are many commercials broadcasting Sekkisei on different TV channels in Taiwan. Kose also printed its advertisements in different magazines, and on large billboards throughout highly trafficked areas like the Xingi Commercial Center and Eastern District of Taipei. From 2007 to 2011, Kose spent 30 million [New Taiwan dollars] on its TV commercials and magazine advertisements to build brand awareness amongst relevant consumers.
• Retail stores: Kose has many retail outlets in different department stores, hypermarkets, and pharmacies, which sell Kose Sekkisei throughout Taiwan and neighboring Penghu Island.
• Overseas trademark registration: Kose Sekkisei has succeeded in registering its 3D trademarks in countries all over the world, including Japan in 1999, as well as China, Korea, Hong Kong, and Singapore from 2011 to 2012.
• Consumer reviews: Kose Sekkisei was voted the most iconic and representative product of Kose.
• Market Survey: Nielsen conducted a large-scale market survey, which analyzed 1,002 questionnaires from females aged 20 to 69. From those 1,002 questionnaires, objective and accurate results can be drawn about “acquired distinctiveness”. Survey respondents were specifically restricted to relevant consumers to ensure the effectiveness of the survey. Respondents who had joined market surveys in the last six months were excluded to ensure the fairness and objectivity of the results. This market survey calculated the overall recognizability of the product packaging in question to be 69%. 75% of respondents indicated that they had seen said product packaging, meaning it was recognizable for 75% of respondents. Of the 75% of respondents who recognized the packaging, 88% expressed that they distinguished it from other brands by it colors, 35% by the color of the bottle cap, 44% the shape of the bottle, and 17% the height of the bottle. In sum, nearly 70% of relevant consumers associated the product packaging in question with “Kose Sekkisei” and would be able to distinguish it from other brands without confusion. As a result, the court held that Kose Sekkisei is not only inherently distinctive but also has “acquired distinctiveness”.

A Comparative Study: Support for Inherent Distinctiveness
In Kose, the Intellectual Property Court of Taiwan primarily focused on the “visual esthetic,” “special design,” and “impression for consumers” to determine whether inherent distinctiveness existed, while relying on sales, commercials, advertisements, overseas trademark registration, consumer reviews, and market surveys to determine if there was an acquired distinctiveness. Although the court listed many objective facts to support an “acquired distinctiveness” finding, it did not utilize much objective evidence to support the conclusion that Kose’s packaging bore “inherent distinctiveness.”
A similar case in the United States could be used as a reference for comparison of judicial attitudes toward product packaging trademarks. In Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, the court determined that “FIJI’s claimed trade dress [was] primarily based on aesthetic elements: the three-dimensional effect of the transparent label, [and] the use of tropical foliage on the inside back label.” The court further noted that “FIJI has won international awards for print and packaging excellence and design innovation in the food packaging industry, which is strong evidence that its packaging is unique or unusual in the field and not simply a variation on existing bottled water designs.” In this case, the court introduced “international awards for print and packaging” as evidence for inherent distinctiveness.
Possibility for the Existence of Inherent Distinctiveness in Single Color Trademark
In Kose, the Intellectual Property Court in Taiwan cited the Examination Guidelines of Non-Traditional Trademark Application of Taiwan §4.2.3 (非傳統商標審查基準4.2.3) in saying, “a combination of colors . . . has higher possibility to have inherent distinctiveness than a single color” (顏色組合. . .具先天識別性之可能性較單一顏色為高). Such language seems not to exclude the possibility that a single color could have inherent distinctiveness. The section also says that “single color . . . ‘usually’ does not have inherent distinctiveness,” (單一顏色 . . . 通常不具先天識別性) further suggesting that single colors could have inherent distinctiveness.
By contrast, the guidelines in the U.S. are distinct and aim to exclude this possibility. As the Supreme Court first decided in Qualitex v. Jacobson Prods. Co. and reiterated in Wal-Mart Stores, Inc. v. Samara Bros., “Indeed, with respect to at least one category of mark—colors—we have held that no mark can ever be inherently distinctive . . . . We held that a color could be protected as a trademark, but only upon a showing of secondary meaning.”
As we can see from Qualitex and Wal-Mart Stores, Inc., U.S. courts have thoroughly addressed questions concerning the possibility of inherent distinctiveness in a single color trademark. To correct and unify related interpretations of trademark law in Taiwan, Taiwanese authorities should follow the lead of American courts and revise and re-address related articles in the “Examination Guidelines of Non-Traditional Trademark Application” of Taiwan §4.2.3 to align with the contexts set forth in the “Examination Guidelines for the 3D, Sounds, and Color Trademarks” of Taiwan §3.3.1 (立體、聲音及顏色商標功能性審查基準), which acknowledge that “single color . . . must prove that it has obtained ‘acquired distinctiveness’ to be registered as a trademark.” (單一顏色…要能註冊為商標，必須證明已取得後天之識別性)
 
Alexis Kuo (郭怡妘) is an L.L.M. candidate, 2017, at NYU School of Law.