First court decision allowing registration of three-dimensional mark

The Beijing First Intermediate People's Court has issued a decision allowing the extension to China of the international registration for a three-dimensional trademark. This is the first court decision allowing the registration of a three-dimensional mark in China.

Ferrero SpA owns the international registration for the three-dimensional representation of the packaging of its famous Ferrero Rocher chocolates (International Registration 783985). The trademark consists of the representation of a chocolate wrapped in gold paper, together with a small oval imprint on a white background, with a golden edge and a fine red border, set in a brown and gold base. The international registration covers various goods in Class 30 of the Nice Classification, including chocolates.

In September 2002 Ferrero applied to extend the international registration of its three-dimensional mark to China under the Madrid Agreement. The Chinese Trademark Office rejected the application on the grounds that the mark was not inherently distinctive. Ferrero applied for a review at the Trademark Review and Adjudication Board, arguing that the mark was sufficiently distinctive and was registrable on a prima facie basis. In October 2006 the board upheld the decision of the Trademark Office, stating that the mark was merely a representation of common packaging for chocolates and could not distinguish Ferrero's goods from those of others. Ferrero appealed to the Beijing First Intermediate People's Court.

The court found that the three-dimensional mark was sufficiently distinctive and was registrable on a prima facie basis. The court was of the view that the brown and gold base, together with the gold wrapping, was special and unique. The court also found that the colour and shape of the packaging were not commonly used by other companies in the confectionery industry. The court thus concluded that the design of the three-dimensional packaging could distinguish Ferrero's chocolates from those of others.

Consequently, the court overruled the decision of the Trademark Review and Adjudication Board and ordered that Ferrero's international registration for the three-dimensional mark be extended to China.

Philip Tsang, Marks & Clerk Hong Kong incorporating Lloyd Wise, Hong Kong