EXAMINATION GUIDELINES FOR 3D, COLOR AND SOUND TRADEMARKS

07/01/2004

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Following the amendments to the Trademark Act that took effect on 28 November 2003, allowing the registration of three-dimensional, sin-gle-color, and sound trademarks, the Intellectual Property Office has announced its Examination Guidelines for Three-Dimensional, Color, and Sound Trademarks, effective from 1 July 2004. The main points of the Guidelines are as follows:

I. Three-dimensional marks

Possible types of three-dimensional marks that may be registered include:

1.The shape of goods themselves.

2.The shape of the container in which the goods are packaged.

3.Three-dimensional labels (of a three-dimensional form other than that of goods or their packaging).

4.The design of decorative features of the premises at which the services are pro-vided.

5.A combination of a three-dimensional form with text, image(s), symbol(s), and/or color(s).

For a three-dimensional trademark to be reg-istered, it must meet the conditions of dis-tinctiveness and non-functionality, as well as the other usual criteria for registrability. The factors to be considered when determining whether a shape has functionality are as fol-lows:

1.Whether it is necessary in order to achieve the use or purpose of the goods concerned.

2.Whether it is required in order to achieve some technical effect. (The Guidelines explicitly state that if an invention patent or utility patent has been granted for the shape concerned, or the applicant has stressed in advertising or in promotional activities that the shape has some function or is required in order to achieve some technical effect, these facts may be used as evidence in de-termining whether the shape is necessary in order to achieve a technical effect.)

3.It results in lower production costs or is associated with a simpler or better produc-tion method.

II. Color trademarks

In addition to displaying the color(s) in the application, the applicant must also define the color(s) by a textual description or by a color reference system.

A single color is, in principle, not inherently distinctive. For obtaining registration, the applicant must prove that the color has ac-quired distinctiveness through use.

III. Sound trademarks

The applicant must define a sound trademark using musical notation (stave or numerical nota-tion) or by a description, and must submit an optical disk bearing a recording of the sound. If musical notation is used, an explanation must also be appended.