Home >> News & Publications >> Newsletter

Newsletter

搜尋

  • 年度搜尋：
  • 專業領域：
  • 時間區間：
    ~
  • 關鍵字：

Difference between Functional Designs and Use of Trademarks

Alina Tang

Under Article 29(1)(1) of the Trademark Act, if a trademark consists exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or the service, such trademark shall not be registered due to a lack of distinctiveness.  Article 30(1)(1) of the same Act also states that a trademark which is exclusively necessary for the functionality of the goods or services shall not be registered.  Furthermore, Article 36(1)(1) of the same Act states that a registered trademark shall not entitle the proprietor to prohibit a third party from indicating his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in industrial or commercial matters and without using it as a trademark.  According to the above, a trademark shall not be registered if it consists of merely the intended purpose or relevant characteristics of the goods, or is exclusively necessary for the goods to be functional.  Even if it is registered, a third party may argue that his/her use of such trademark is to indicate the intended purpose and shall not be bound by effect of the trademark.   

In this case, O-ONE INTERNATIONAL LIMITED COMPANY ("O-ONE") obtained trademark registration for the MagSafe wireless charger's magnet array pattern ("Image not found.," "Trademark"). In order to cooperate with Apple's MagSafe wireless charging technology, EVOLUTIVE LABS CO., LTD. ("EVOLUTIVE") has installed magnets at relative positions on the back panel of its cell phone case products, called "RHINOSHIELD" (Image not found.). This allows the cell phone, even when equipped with a cell phone case, to securely attach to the magnetic structure of the charger. The installation of magnets on the "RHINOSHIELD" cell phone case products has formed a pattern resembling the Trademark.  The Intellectual Property and Commercial Court ("IPCC") stated in its civil judgment (Case No.: 112-Ming-Shang-Su-40) that the use of the Trademark pattern on the back panel of the "RHINOSHIELD" cell phone case is a functional design to match the MagSafe wireless charging technology of the cell phone. Furthermore, the packaging of "RHINOSHIELD" products are clearly labeled with the trademarks and brands of "Rhinoshield" or "RhinoShield," and the use of the Trademark is not for marketing purposes.
 
The IPCC further ruled that Apple had already launched the MagSafe wireless charging technology before the registration of the Trademark. Apple released the cell phone case and other accessories with the disputed pattern on the back panel in order to support the MagSafe wireless charging technology. Since the use of the disputed pattern on the back panel of the "RHINOSHIELD" cell phone case is to support the MagSafe wireless charging technology, and the disputed pattern was not used or originated by O-ONE first, the use of the disputed pattern on the "RHINOSHIELD" cell phone case is mainly for implementing the MagSafe wireless charging technology and is not bound by the effect of the Trademark.
 
In this case, EVOLUTIVE originally claimed that the Trademark should be revoked, but subsequently withdrew this claim and only sought to confirm that the "RHINOSHIELD" cell phone case was not bound by the effect of the Trademark. Therefore, whether the Trademark should not be registered due to a lack of distinctiveness or other reasons is still subject to the decision of the opposition and/or invalidation procedures.
回上一頁