Kose Prevails over Taiwan IPO in Lawsuit for Registering a 3D Mark for Its Sekkisei Products

Kose Corporation filed an application with Taiwan IPO for registering a 3D mark which consists of a blue container, a white cap, and three Chinese characters mark “雪肌精” as a whole for its Sekkisei products (hereinafter the “proposed mark”) but the application was denied, for which Kose Corporation filed an administrative appeal with the Ministry of Economic Affairs (MOEA) and the appeal was turned down.  In this regard, Kose Corporation instituted an administrative lawsuit with the Taiwan IP Court.

Kose Corporation maintained that since its release almost 30 years ago, more than 50 million bottles of Sekkisei lotion have been sold around the world.  In Taiwan, Medicated Sekkisei lotion for skin brightening has always been the best seller with an incomparable annual sales amount of more than TWD300 million.  In addition to the above objective figures, media reports also demonstrate the high popularity of Sekkisei products among customers.  The August 2010 edition of Beauty magazine named Sekkisei lotion to the top 5 list of basic skincare products in Taiwan.  Sekkisei lotion had also taken the first place in the list of top 100 best sellers for skin whitening products in the Marie Claire magazine both in 2010 and 2011.  The foregoing shows that Sekkisei products have been extremely well received as women skincare products.  The sales volume, media reports, and market survey can substantiate the acquired distinctiveness possessed by the proposed mark that represents the Sekkisei products.  Moreover, Kose Corporation has also successfully registered the proposed mark as a 3-dimensional mark in China, Korea, Hong Kong, and Singapore.  Based on the foregoing, Kose Corporation sought a successful registration of the proposed mark with Taiwan IPO. 

However, Taiwan IPO disapproved Kose Corporation’s application on the ground that there have been many skincare products packaged in containers of similar shapes and colors and the proposed mark, if approved for registration, will affect and limit the other suppliers’ freedom of fair use of similar product packaging.

The IP Court took another view.  According to the IP Court’s holding, the word elements of the proposed mark, “雪肌精”, “SEKKISEI”, and “KOSE” are all created by Kose Corporation.  As to the container of Sekkisei lotion, it is a rectangular prism bottle in lazurite color that has two parallel flat front and back faces and two arc lateral sides which form four congruent 150-degree angles.  On the top of the bottle, it is a white cap that has a silver rim on the top.  The colors of lazurite, white, and silver form a color scheme combination, a design that is different from the packaging of other products of the kind and characterizes the bottle of the Sekkisei lotion, the 3-dimensional component of the proposed mark.  The proposed mark is a combination of words, designs, colors and 3-dimensional shape, and the combination of these elements as a whole is a distinguishable mark that possesses inherent distinctiveness.

In addition, advertising for Sekkisei products is everywhere around people in Taiwan.  It is on TV and the street and in magazines, and the physical sales channels thereof have also been established in major department stores.  As shown in relevant market survey, the bottle of Sekkisei lotion with the said color scheme is strikingly recognizable by the survey respondents and thus has acquired distinctiveness.  Accordingly, the IP Court decided that the MOEA’s appeal decision and Taiwan IPO’s rejection decision should both be vacated, and Taiwan IPO should decide otherwise on this matter in accordance with the IP Court’s holding.  (November 2014) 
/CCS