Protection for non-traditional trademarks lags behind in China
Although China recognises non-traditional marks, it is still rare for them to secure protection. Nevertheless, the situation and the market are improving and applicants will one day be able to effectively protect their rights in all types of trademark in China.
Trademarks exist everywhere and many famous companies register significant numbers of them to support their brand-protection strategies. The Chinese public is also familiar with numerous trademarks, but these are often only traditional marks.
In general, people are used to seeing traditional trademarks composed of characters, letters, numbers, graphic elements or a combination thereof. However, China also recognises several kinds of non-traditional mark, such as three-dimensional (3D), colour-combination and sound marks, which may be unfamiliar to many people. Sound marks have only recently become acceptable following an amendment to Article 8 of the Trademark Law: “Any sign that distinguishes the goods of a natural person, legal person, or other organisation, from those of others, including any word, device, letter, number, three-dimensional sign, colour combination, sound, or combination thereof, may be registered as a trademark.”
3D marks are composed of a 3D sign or a 3D sign and other elements. Such a mark can be the shape of the product itself, its packaging or other 3D signs. When filing a 3D mark in China, the applicant must claim the type of trademark and submit pictures determining the mark’s whole appearance.
A 3D mark must obey the requirements of a traditional mark, as well as some further special requirements. When registering a 3D mark, the China Patent and Trademark Office (CTMO) will examine:
- whether the mark is forbidden to be used as a trademark – a 3D mark should not violate the prohibitions set out in Article 10 of the Trademark Law;
- whether the mark is distinctive enough to function as a trademark – a 3D mark should be rejected if its shape aims mainly to achieve technical function or give the goods substantive value; and
- whether the mark is similar to prior 3D or traditional marks.
Article 12 of the Trademark Law provides that: “where a 3D sign is applied for registration as a trademark, application shall be rejected if the 3D sign merely indicates the shape inherent in the nature of the goods concerned or if the 3D sign is only dictated by the need to achieve technical effects or the need to give the goods substantive value.”
There are many detailed criteria to each aspect that must be considered before registering a 3D mark, meaning that it is difficult to register such marks in China. Whether the mark is distinctive enough to function as a trademark is the biggest issue when filing a 3D mark.
A famous example is the FERRERO mark (see Figure 1).
Ferrero chocolates are famous around the world, but when a registration for the mark was applied for in China, the Trademark Review and Adjudication Board (TRAB) rejected it as non-distinctive. The applicant was not satisfied with the decision and appealed. The court finally approved protection of the mark – the first 3D mark to be approved in China. The court provided much needed clarity on this subject, reasoning that the mark is not the common shape of the product or a unique shape to achieve function or value. This decision has provided the following guidance for applicants on how to protect their own 3D marks:
- Has the mark has been used widely in China before filing? This is an important factor for the court to consider when making its decision. If a 3D mark has not been used before filing, it is difficult for the consumers to recognise it as a trademark. Ferrero has used its mark for many years, and when consumers see chocolate in this shape, they recognise a Ferrero product, meaning that the shape functions as a trademark.
- Has the mark been specially designed? Another factor is the degree of distinctiveness of the mark itself. Most applicants will design their 3D marks when filing an application, but simple designs (eg, size and proportion) will not be enough – they must be highly specialised, such as the distinctive Coca-Cola bottle.
- Will the registration of the 3D mark positively influence the industry? Although not explicitly mentioned by the court, this is also a key factor. The court approved the Ferrero mark, encouraging companies in the same industry to develop their own products, which may in turn help to avoid unfair competition and copies made in bad faith.
If an applicant wants to file a 3D trademark, it should design the mark first and use it to develop a reputation among the relevant public. This should result in a positive effect on the industry as a whole.
A colour-combination mark is composed of two or more colours, without special shapes or designs. Colour-combination marks differ from pure device marks in colour, but designate no special order, design or character to the colours.
When filing a colour-combination mark, the applicant must claim the type of trademark and submit a clear specimen of the mark. The specimen can be a square of colour only or the appearance of the colour in actual use; however, the appearance is not part of the mark and should be represented by a dashed line. The applicant must also claim the name and number of each colour and describe how to use the mark.
As a trademark, a colour-combination mark should be distinctive so as to distinguish the source of the goods. A mark composed of the colours of designated products or the commonly used colours of packaging or service providers will be rejected.
A famous example is the first colour-combination trademark owned by The Gillette Company (see Figure 2).
Gillette’s mark was rejected by the CTMO, but later approved by the TRAB.
In general, a colour combination is not inherently distinctive, but rather acquires distinctiveness through wide use in the market. In respect of the Gillette mark, the applicant submitted a large amount of evidence of use to prove that its colour combination had obtained distinctiveness.
A sound mark is composed only of the sound itself. When filing a sound-combination mark, the applicant must claim the type of trademark and submit a sample of the sound. The sound should be stored on an audio file.
A sound mark can be composed of musical sounds (eg, a piece of music) or non-musical sounds (eg, sounds from nature, animals or a combination thereof).
If the sound mark is a musical sound, the applicant must submit the stave or numbered musical notation of the music, with all necessary elements that determine that music (eg, tones and beats). A simple description of the music must also be submitted. If the sound mark is a non-musical sound, the applicant must submit a detailed description of the sound, demonstrating to the examiners what the sound is. If the sound mark is composed by both musical and non-musical sounds, the applicant must submit both.
The applicant must also submit an introduction on how to use the sound mark.
The sound must be distinctive and must not:
- be the same or similar to the national anthem of China or any other country;
- reflect the characters of the designated goods or services only (eg, a barking dog for canine products); or
- be too simple or too common (eg, a single tune or a tune commonly used music in the industry).
A sound mark will be considered to be similar to a word mark if the pronunciation of the marks is similar. For example, you cannot register a sound mark for ‘yahoo’ as there is a prior YAHOO word mark.
In 2016 China approved the first sound mark owned by China Radio International (see Figure 3).
The mark was filed in 2014. Initially, the CTMO rejected the mark, but it was later approved by the TRAB.
The inherent distinctiveness of sound marks is low. Applicants must first use the marks to acquire a certain distinctiveness before filing.
Although China is catching up with the world’s most developed trademark criteria and has begun to accept non-traditional marks, it remains rare to secure protection for these non-traditional marks in China. There is still a long way to go to find a way to examine these marks that fits China’s conditions and demands. However, things are improving and one day applicants will be able to properly and effectively protect their rights in China.