經通國際智慧產權事務所

On October 23, 2008, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the trademark opposition filed against the 3D trademark application bearing the famous package of Ferrero Rocher hazelnut chocolate and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Taipei High Administrative Court based on the reason of acquired distinctiveness (Case 97A/No. 1206, October 23, 2008).

In November 2004, the Italian Company FERRERO S.P.A. (FERRERO) filed a 3D trademark application bearing a golden sphere on a brown paper plate. However, Hong Da Chang Trading Company (Hong Da Chang) filed a trademark opposition against the said trademark based on the following reasons,

1. The opposed trademark lacked distinctiveness.
2. The golden aluminum foil and brown paper plate of the opposed trademark served the functions of heat insulation and anti-rolling, which were generally used for chocolates wrapping.
3. The label on the top of the opposed trademark was similar to the appellant’s prior trademark registration (with application date of May 1, 1996) bearing “FOREVER ROESRY & Device”.

After the said opposition and the subsequent appeal were both rejected, Hong Da Chang filed an appeal to the Taipei High Administrative Court. The Court reviewed the case and provided the following statements,

1. The Court confirmed that the opposed trademark lacked distinctiveness.
2. However, according to the evidence submitted by FERRERO, the opposed trademark had been used in the Taiwan’s market since 1988. Also, from 1993 to 2004, the related marketing expenses consistently exceeded USD11.5 million annually. Therefore, the opposed trademark had acquired distinctiveness.
3. The functions of wrapping papers and color combination could all be achieved by other designs of packages. Thus, as the opposed trademark’s design of the golden sphere and brown paper plate was not the only packaging choice available to other chocolate manufactures, the opposed trademark did not violate Trademark Act.
4. Because the label of the opposed trademark was “FERRERO ROCHER”, which had different meaning, pronunciation and appearance from Hong Da Chang’s mark “FOREVER ROSERY & Device”, the opposed trademark was not similar to the appellant’s trademark.

Based on the reasons above, the Court provided the ruling of rejecting the appeal filed by Hong Da Chang.

Derived from www.udn.com

3D Trademark Registration no. 1200291
 

Organized and translated by Akina Pan

International Affairs