The issue of whether the same design can be protected simultaneously as a three-dimensional trademark under the Trademark Act and as a design patent under the Patent Act is a matter of considerable concern in the industry.

 

According to the Examination Guidelines on Non-Traditional Trademarks issued by the Intellectual Property Office and its current practices, distinctiveness and functionality are two separate issues that need to be assessed. However, the same design may be eligible for both the registration of a three-dimensional trademark and the protection of a design patent, and there are already specific approved cases by the IPO.

 

Trademarks that are necessary to fulfill their function cannot be registered, mainly referring to creations with technical and functional aspects, which should be protected by the patent system. After the expiration of the patent rights, anyone can freely use the technology to promote technological development.

 

However, design patents refer to the shape, pattern, color, or their combination of all or part of an item, created through visual appeal, which may not strongly affect fair competition in the market. They are less likely to have practical functionality compared to inventions and utility model patents. Therefore, non-traditional trademarks, especially three-dimensional shapes, may possibly simultaneously obtain protection under both of the Trademark Act and the Patent Act. Nonetheless, it is important that the appearance must serve the function of indicating the origin of the goods in order to receive trademark protection as stipulated by the Trademark Act.

 

Currently, the IPO has granted both three-dimensional trademark registration and design patent protection cases, including at least the registration number 01472525 for the three-dimensional trademark and design patent certificate number D133236 obtained by KENZO S.A. for its famous perfume bottle design.