Applications for Non-traditional TM from 2020 to 2021

From January 1, 2020 to August 31, 2021, a total of 180 non-traditional trademark applications have been filed in Taiwan.  As of September 2021, a total of 21 applications have been approved, 24 applications have been rejected, and there are 135 applications under examination. 

During this period, most of the non-traditional trademark applications were three-dimensional trademark cases, with 132 applications in total.  So far, 14 applications have been approved and 14 applications have been rejected.  And the remaining 104 applications are still under examination.

A total of 16 applications for color trademarks have been applied, and 4 have been rejected.  Among the 16 applications, no trademark applications have been approved for registration.  Among those color trademark applications, the following “IG Spectrum Multi-Color Gradient” trademark filed by INSTAGRAM, LLC is the most eye-catching: 

In this case,TAIWAN Intellectual Property Office (“TIPO”) has issued a Pre-rejection notice as to the trademark distinctiveness.  The color mark has been well-known by websurfers; we may keep close watch on it see if it can convince TIPO to acquire distinctiveness (secondary meaning).

There are 21 repeating pattern trademark applications (including position trademark applications), 7 of which have been approved for registration, and 5 have been rejected.  Many marks owned by the famous fashion companies which have been continuous used for many years were included in these approved cases, such as "TB Pattern (Black & White)" of BURBERRY LIMITED, "Blason Logo" of CELINE, "FF (Zucca Jacquard) " of FENDI S.R.L. , "Toile Monogram (toile blanche fleurs + LV noires sans contours)" of LOUIS VUITTON MALLETIER. 

There are a total of eight applications for sound trademarks, including "Pinkfong (Sound Mark)" filed by a well-known animation company SMART STUDY CO., LTD. from Korea; while it has been rejected by TIPO.  Three other motion trademark applications are still pending. 

Most of the applicants of non-traditional trademark need to convince the examiner that the trademarks have acquired distinctiveness (secondary meaning) by intensive use, and during the examination, a pre-rejection notice will be issued to request the applicant to demonstrate in this regard by submission of use evidence.  The examination procedure normally takes more than one year, even without the pre-rejection notice like the non-traditional trademark application for the famous fashion brands as mentioned above.  While, the examination period of some applications is even more than 4 years, such as “Goyardine (fig.)” of GOYARD ST-HONORE.  This application was filed on April 5, 2017, but allowed for registration on February 1, 2021.

The repeating pattern trademark has been used by GOYARD ST-HONORE on its tote bag for many years, it is quite famous for foreign consumers.  However, Taiwanese consumers may be not familiar with the “Goyardine (fig.)” of this brand as other fashion brands; it increases the difficulty for this trademark application.  It is worthy of your attention that a repeating pattern application for trademark “MISS 21” failed by a local company on January 7, 2021, and approved for registration on July 6, 2021.   The examine period for this application is only about half year, and no pre-rejection notice as to its distinctiveness was issued.  It is again confirmed that whether a trademark is distinctive or not is mainly based on Taiwanese consumers’ recognition of the trademark.