經通國際智慧產權事務所

The Japanese company SONY has filed trademark applications for its “StarLight digital technological lithium battery” with designs of “K” in gray and “G” in red. However, the Taiwan Intellectual Property Office believes the designs appear to be its product number, therefore are not distinctive and are rejected. The recent ruling of the Intellectual Property Court has maintained the decision of the TIPO.

In February of 2008, SONY has filed applications of stylized designs in gray and red for its camera brand StarLight’s lithium batteries. The TIPO believes that the “K” and the “G” in foreign language would be perceived as a part of the specification and appearance of the product itself. The designs are not distinctive, therefore, registration is not allowed.

SONY disagrees with TIPO’s decision and consequently filed administrative remedy for the trademark applications. SONY indicates that the trademarks are specially designed marks with colored geometric patterns. The marks are composed of red and gray squares coordinating with either alphabet “G” or “K” respectively. The trademarks are mainly used on the white background of the lithium battery, thus, is very eye-catching and is representative of SONY’s simple yet fashionable style; the marks are distinctive.

SONY also argues that as an internationally well-known company, their products have long been rooted in the heart of the consumers; no consumer has ever mistaken their trademark as product number. Furthermore, the actual product number of the battery is in English alphabets “DB-BG1”. SONY further emphasizes that these trademarks have been registered in Japan. Even though trademark registration is by jurisdiction, as the trademark is internationally used, SONY urges the TIPO and the Intellectual Property Court to have more international sense.

After SONY filed the Appeal, the gray and the red trademarks are separately examined by different Judges of the Intellectual Property Court. However, both Judges ruled against SONY.

The Collegial Panel believes that the trademarks are composed of overlapping rectangle and square in color with an English alphabet. Regardless of its color or shape, the marks seem to be designed with average artistic design method and are not distinctive.

The Collegial Panel further discovers that the alphabet of the mark corresponds with the product number according to different battery specification. Furthermore, a series of triangles is shown on the battery to indicate the inserting direction of the battery. Thus, the Panel believes that these images are not only shapes or trademarks, but are symbols that explain a function, which is not an acceptable element for a trademark.

Organized and translated by Jenny Yu

International Affairs