The trademark landscape may be changing in Taiwan if a number of recent decisions coming from the Taiwan Intellectual Property Office (“TIPO”) are any indication. Traditionally known for shooting down applications that aim to register three-dimension shapes, the TIPO recently handed Cartier a win and agreed to register the 3D design of its Love Bracelet, finding that on the heels of filing an application in December 2017, the Paris-based jewelry company successfully established that the shape of the bracelet has acquired distinctiveness in the minds of consumers, thereby, enabling the bracelet, itself, to act as an indicator of source.
Key questions that the TIPO examiner asked in weighing the registrability of the 3D mark, according to IAM’s Monica Wang and Sarah Sun: “How is the 3D shape used by the applicant, and do others in the same industry use the same 3D shape? How long has the 3D shape been used in the market and is its sales amount and market share ratio significant in the related market? How is the 3D shape promoted and advertised and did the applicant emphasize the 3D shape when promoting or advertising, such that consumers will be able to recognize the 3D shape itself as identifying the source of the products?”
With the foregoing in mind, the TIPO found that the proof that Cartier provided in connection with its “Screw Device/Love Bracelet 3D shape” mark – which consists of “the overall configuration of a bracelet having a series of simulated screws which encircle the goods and two real screws, which appear at the points on the bracelet where it may be opened” – enabled it to overcome a distinctiveness refusal, as the shape of the bracelet was found to “be an identifier of the applicant’s goods or services in the course of trade” as a result of years of consistent use, advertising, sales in the region, etc.
While Cartier has prevailed in its quest to register the design of its world-famous bracelet, one that the Richemont-owned jewelry company first began offering up in 1969, Wang and Sun caution other brands seeking similar protections in Taiwan that “judgment as to whether a 3D shape has acquired secondary meaning is made on a case-by-case basis, and thus, applicants seeking to obtain trademark registrations for 3D shapes should prepare proper use evidence before filing an application to register a 3D shape, as it is very likely that TIPO will require applicants to submit such evidence in order to obtain a registration.”
THE BROAD VIEW: Despite the economic effects that the COVID-19 pandemic has had on the luxury goods market in Taiwan, namely as a result of a lack of high-spending tourists from the Chinese mainland, Hong Kong-based firm CN Logistics states that “the stability of the country’s fashion market has made it captivating for luxury brands,” such as Cartier, whose CEO Cyrille Vigneron said last year that the jewelry company is relying on the Asian market and online sales to help drive growth amid the pandemic. At the same time, in its 2020 Wealth Report, Knight Frank pointed to Taipei as one of the cities with the highest number of ultra-high-net-worth individuals in the world, and expects Taiwan, as a whole, to exhibit a 13 percent increase over the next five years when it comes to growth of ultra-high-net-worth individuals (i.e., individuals with a net worth of over $30 million including their primary residence).
Against this background, CL Logistics expects that luxury brands will “continue investing in the region” – particularly as consumers exhibit an increased willingness to spend more at home (a trend that is expected to endure to some extent even once international travel resumes) – and presumably, continue building out their intellectual property portfolios in the process.