San Yo Pharmaceutical Lost the Trademark Suit for “Kuo An Triangular Flask”.

San Yo Pharmaceutical Industrial Co., Ltd. (hereinafter “San Yo Pharmaceutical”) successfully filed with Taiwan IPO an application for registering a 3-dimensional mark for a triangular flask that contains Kuo An Pharmaceutical Co., Ltd.’s cough and cold syrup but the registration was then cancelled upon its competitors’ opposition, for which San Yo Pharmaceutical initiated an administrative lawsuit with Taiwan IP Court but lost the case (IP Court’s Administrative Judgment under docket (102) Xing-Shan-Su No. 24 [2013.6.27]).

In 2002, San Yo Pharmaceutical purchased and obtained two 2-dimensional trademarks of Kuo An Pharmaceutical Co., Ltd.’s triangular flask in a court auction and then successfully filed with Taiwan IPO for registering the 3-dimensional mark for the triangular flask, against which other two pharmaceutical companies filed an opposition with Taiwan IPO on the ground of San Yo Pharmaceutical’s contravention of Taiwan Trademark Act.  Taiwan IPO examined the two companies’ opposition upon request and decided to cancel San Yo Pharmaceutical’s registration of the 3-dimensional mark for the triangular flask in question.

To beat the opposition against it, San Yo Pharmaceutical presented the arguments that consumers have been become familiar with the 3-dimensional mark for the triangular flask in question, which is a result of the extensive and repeated broadcast of their advertisement, over the period from 2004 through 2006, specifically designed for the product “Kuo An cough and cold syrup” which is contained in the triangular flask in question.  Consumers’ familiarity is attributable to the lines in the advertisement that keep emphasizing and reminding customers of “Kuo An cough and cold syrup” being contained in a triangular flask.  The wide spread of the key lines of the advertisement not only boosts sale of the said product but also enables consumers to identify the source of said product.  Therefore, the triangular flask in question has acquired distinctiveness even if it is not eligible for inherent distinctiveness. 

Taiwan IP Court found San Yo Pharmaceutical’s arguments meritless and inadmissible based on the following reasoning: (1) The right San Yo Pharmaceutical obtained in the court auction in 2002 should be limited to its right to use and to exclude any other from using only the 2-dimensional marks of the triangular flask in question and the right should not be extended to the Chinese characters “三角矸” (meaning “a triangular flask”) or any 3-dimensional shape or concept that is identical or similar to the triangular flask in question because San Yo Pharmaceutical did not generally assume Guo An Pharmaceutical Co., Ltd.’s business; (2) the triangular flask in question, accompanied with a rotating cap, should be simply a container, and therefore, does not possess inherent distinctiveness; and (3) the triangular flask in question does not have acquired distinctiveness, either because other two pharmaceutical companies had already used triangular container to contain cough and cold syrup product before San Yo Pharmaceutical filed an application for the 3-dimensional mark of the triangular flask in question.  The case is still appealable.  (July 2013) 
/CCS