Taiwan Supreme Administrative Court dismisses Taiwan IPO’s appeal with respect to Kose Corporation’s 3D mark application for Sekkisei product

Kose Corporation had previously tried to register a 3D mark consisting of a blue container, a white cap, and three Chinese characters “雪肌精” for its extremely popular skincare product, Sekkisei (hereinafter the “proposed mark”) but the proposed registration turned out unsuccessful at the Taiwan IPO, 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.  Taiwan IP Court decided to vacate the administrative appeal decision and reverse Taiwan IPO’s decision and remanded the matter back to Taiwan IPO for redecision based on IP Court’s holdings.  Out of dissatisfaction with the IP Court’s decision, Taiwan IPO appealed this case to the Taiwan Supreme Administrative Court which affirmed the IP Court’s decision against Taiwan IPO by a final judgment. 

Kose Corporation presented relevant market surveys to prove the high distinctiveness of the proposed mark, which pointed out that almost a million bottles of Sekkisei product have been sold in the past five years in Taiwan with an yearly turnover over TWD300 million.  The foregoing facts make it sustainable that the proposed mark possesses acquired distinctiveness.  Moreover, the denial of the proposed registration is unexpected as opposed to the successful registrations of the proposed mark in Japan, China, Korea, Hong Kong, and Singapore. 

Taiwan IPO denied the proposed registration based on a different point of view that the shape of Sekkisei product container and the colors thereof are usually used in the industry and thus are not distinctive.  In addition, trademark registration is subject to territoriality principle; that is, approval or denial of a proposed trademark registration in different countries should be subject to their respective and different legal regime, examination standards, and legislation.  That is why the proposed mark was denied for registration in Taiwan.  In other words, the proposed mark’s successful registrations in other countries do not make it a matter of course that it should be successfully registered in Taiwan. 

However, the IP Court passed a judgment in favor of Kose Corporation against Taiwan IPO on the ground that the container of Sekkisei product has both inherent and acquired distinctiveness. 

The Taiwan Supreme Administrative Court held that the container of Sekkisei product has possessed acquired distinctiveness after it has been used widely for a long period of time and exposed extensively in promotional materials and media reports and the Sekkisei product has been sold in large quantity, even though the container is actually a similar design used in the industry that is hardly distinctive from other products.  In view of the foregoing holding, the Supreme Administrative Court dismissed Taiwan IPO’s appeal.  (January 2016)
/CCS