萬國法律事務所

Mentholatum, an American maker of non-prescription health care products, lost its trademark case for its DERM 3 COMPLEX mark. Taiwan’s Supreme Administrative Court held that the DERM 3 COMPLEX mark is devoid of distinctiveness, and thus, entered a binding and final judgment against Mentholatum.

In May 2011, Mentholatum submitted to the Taiwan Intellectual Property Office (TIPO) an application for registration of the DERM 3 COMPLEX mark for use on or with laundry bleach and other laundry detergents, sunscreen cosmetics and dozens of commodities.

TIPO’s examiner found that the foreign language used in the DERM 3 COMPLEX mark implies "three unit complex of skin," which, per the Taiwan Trademark Act, is merely a description of the quality, intended purpose, or relevant characteristics of the goods, and thus, the DERM 3 COMPLEX mark was rejected due to its lack of distinctiveness.

The Court held that the DERM 3 COMPLEX mark was obtained from a simple design with only foreign language and Arabic numerals, and this visible DERM 3 COMPLEX mark is simply a description of the commodity components.

The foreign word DERM means dermis or skin, and COMPLEX means composite materials, so DERM 3 COMPLEX, as designed by Mentholatum, means "three unit complex of skin."

In addition, according to Mentholatum’s promotional brochure, DERM 3 COMPLEX, as a pleiotropic activating factor, contains the wheat seed extract, hyaluronic acid, and works to prevent skin aging, improve skin repair capacity and have other effects.

Therefore, Mentholatum uses DERM 3 COMPLEX as a trademark on or with laundry bleach and other laundry detergents, sunscreen preparations, skin cleansing preparations and other goods, and the mark is merely a description of the ingredients or effects of the goods, and thus, in accordance with Article 29 Paragraph 1 Item 1 of Taiwan’s Trademark Act, the trademark registration was refused.

The verdict illustrates and reminds that when a trademark is not used alone and is instead combined with other trademarks, the combined use of the information may also be used for trademarks registration as evidence, but the trademark alone can be registered only if it is distinctive without the other combined trademarks. Mentholatum lost this case at the Taipei High Administrative Court, and again lost its appeal at the Supreme Administrative Court.