Registering 3D Marks in China

Businesses may wish to obtain broad IP protection for the designs of their products. This may include seeking 3D trademark registration, along with obtaining design patent and copyright protection.

Businesses may face challenges in registering their 3D marks in China, particularly because the mark must:

  • not fall within the general prohibitions of the law;
  • not possess functional features;
  • satisfy the distinctiveness requirements; and
  • not be identical or similar to prior conflicting marks.

The mark must not be prohibited by law

The Trademark Law prohibits certain trademarks from registration. For example, trademarks cannot contain the Red Cross emblem, so registration of trademarks that contain or resemble the Red Cross emblem is prohibited.

The mark must not possess functional features

Shapes with functional features are prohibited from registration as trademarks. These include shapes derived from the inherent features of products, shapes required for technical effects, and shapes that give products substantial value.

Shapes derived from inherent features of products

Shapes that are required to realise the main function or purpose of the product are prohibited from registration as trademarks. For example, the spherical shape is a core feature of basketballs. The spherical shape is, therefore, prohibited from registrations relating to basketballs. This is because, as a public policy, all basketball manufacturers should be able to produce basketballs of this shape, and rights to the shape should not be held by a single business.

Shapes required for technical effects

Shapes that are required for products to have or to facilitate a specific function are prohibited from registration as trademarks. In those cases, the shape is deemed to possess a technical function. Razor blades illustrate one such example.

The main reason why shapes with technical functions are prohibited from registration as trademarks is that although the shape and technical features must be protected to encourage innovation, the protection should have limits. If such shapes are granted trademark registration, which is renewable indefinitely, other businesses will be deterred from using the same or similar shapes, which may hinder further innovation.

Another reason why such shapes are prohibited from registration is to prevent conflict with the Patent Law. Functional features regarding shapes are best protected under the Patent Law; however, the renewability of trademarks may lead to the Patent Law being bypassed in favour of trademark protection.

Shapes giving products substantial value

Shapes and designs that constitute part of the appearance of a product and that affect the product’s value are prohibited from registration as trademarks. If a particular shape can affect the appearance of a product, thereby influencing its value, the shape will be deemed to have an aesthetic function. Faceted shapes of diamonds are one example.

Similar to the case regarding the technical function of a shape, the law prohibits shapes that possess an aesthetic function from being registered as trademarks to prevent aesthetic designs from being monopolised by only a few persons and to prevent conflict with the provisions of the Copyright Law and the Patent Law that serve to protect the aesthetic functions of designs.

The mark must satisfy distinctiveness requirements

Trademarks cannot be approved for registration unless they are sufficiently distinct and can serve to distinguish the source of the products bearing them. Trademarks can be inherently distinctive, and even if they are not, they can still acquire distinctiveness by developing a secondary meaning through use.

Inherent distinctiveness

One important factor that affects the inherent distinctiveness of a 3D mark is the relationship between the mark and the goods on which the mark is used. The closer the relationship between the mark and goods, the weaker the distinctiveness, and vice versa.

Three-dimensional designs possessing features that are unrelated to the products bearing the mark are usually deemed to possess distinctiveness. Examples of this type of mark are car logos placed on the front or back of cars, and the iconic golden arches symbol of McDonald’s.

In contrast, a 3D mark that features the product shape or the product packaging would generally be deemed to lack distinctiveness because of its close relation to the core features of the product.

Nevertheless, there are many instances in which 3D marks featuring the product shape or the product packaging contain unique designs, and in those cases, the issue is whether the unique design gives the mark sufficient inherent distinctiveness. This issue arises because conventional 2D trademarks that are deemed indistinct can obtain distinctiveness with the addition of unique features. For instance, a mark containing the single letter ‘M’ in plain form is deemed to be indistinctive; however, if the letter is sufficiently stylised, such as in the case of the golden arches symbol of McDonald’s, it can obtain distinctiveness. It has, therefore, been debated whether 3D marks in similar situations can be treated similarly. The laws governing the issue have evolved over time in China.

In the case of the registrability of the 3D mark featuring Ferrero chocolate packaging (ie, a gold foil-wrapped orb in a fluted paper cup with a label affixed on top), the Beijing First Intermediate Court found the unique design of the packaging to be sufficient to establish the distinctiveness of the mark. It stated that:

the choice of colour and the packaging style of the applied-for trademark is not the type of design commonly used in the industry, nor is it the usual packaging style of chocolate products. The unique features of the applied-for trademark have made it a symbolic design of the applicant’s products, which enables the consumer to clearly determine the source of the goods bearing the applied-for mark.

Different decisions were reached in several cases that came after the Ferrero case. One of the cases involves Nestlé’s bottle of soy sauce (ie, a curved body with a wide base and a long, tapered neck). Both the Beijing First Intermediate Court of first instance and the Beijing High Court of second instance found that the mark lacks distinctiveness on the grounds that the relevant demographic would usually consider the mark to be the typical shape of the product packaging and would not view it as a trademark. The mark cannot serve to distinguish the source of goods bearing it.

The Supreme Court confirmed the reversal in the Interpretation of the Law Governing Trademark Prosecution Matters (the Interpretation). According to the Interpretation: “the original creation or earliest use of a shape does not automatically give rise to its distinctiveness as a trademark”.

It is now widely accepted that 3D marks featuring the product shape or the product packaging do not necessarily possess distinctiveness, even if they have a unique design. The relevant demographic will usually not view those shapes as trademarks but rather as the typical product shape or product packaging.

There is a reason behind the difference between 3D marks and conventional 2D marks: consumers usually deem the texts or 2D designs in conventional marks as indicative of the source of the products, and the addition of unique features to otherwise indistinctive texts or 2D designs is sufficient; however, consumers generally do not consider the shape or packaging of a product to perform the same function, and despite the addition of unique features, it would still be difficult for the shape to convey a message beyond the shape and design of the product.

This does not necessarily mean the unique design of 3D marks featuring the product shape or the product packaging is of no use in establishing the inherent distinctiveness of the marks. According to the text of the Interpretation, it may be a factor in determining distinctiveness. Further, it cannot be denied that the unique shape of some products or their parts does indicate the origin of the products. One example is the Volvo logo placed at the front and back of cars, with two bars on both sides, one extending from the centrally placed logo to the upper right and the other extending to the lower left. The design and shape itself is indicative of the brand of the car, at least to a certain extent, even in the absence of the text ‘VOLVO’.

Acquired distinctiveness

A 3D mark that features the product shape or the product packaging and that lacks inherent distinctiveness can acquire distinctiveness through use. It can prove that it has acquired a secondary meaning – a meaning other than simply being the product shape or the product packaging – and can serve to identify the origin of the products bearing it.

Evidence of the sale and promotion of products whose shape is featured in a 3D mark can help establish the acquired distinctiveness of the mark. This type of evidence is usually referred to as indirect evidence. Examples of indirect evidence include:

  • the duration of use of the mark;
  • the method of use of the mark by the applicant and the different methods of use of the mark in industry; and
  • sales revenue, market share, advertising expenditure, geographical coverage and media coverage in relation to the mark and the products, etc.

Evidence to prove that the consumer has made a connection between a 3D mark and the origin of products bearing the mark is more helpful in establishing the acquired distinctiveness of a mark. This type of evidence is usually referred to as direct evidence.

Consumer surveys are a very useful type of direct evidence. For a consumer survey to be accurate and persuasive, it is important to determine the consumer base, since each product is specific in that regard. For example, although all men wearing wristwatches are the relevant demographic for wristwatches, only a small group of men are the relevant demographic for luxury wristwatches.

Determining the right consumer base may also have an added benefit: it can help reduce the size of the consumer base and make the market survey more manageable.

The mark must not be identical or similar to prior conflicting marks

Registrations for trademarks that are identical or similar to prior marks covering the same or similar goods or services will not be approved. A 3D mark must differ from prior 3D marks in aspects such as structure, shape and overall appearance before it can be approved for registration.

Comment

Securing registration of 3D trademarks in China requires the satisfaction of four requirements. The requirement for distinctiveness is particularly difficult to meet in the case of marks featuring the product shape or product packaging; however, in certain cases, the unique shape of a product can convey a relatively strong indication of the origin of the product. In addition, consumer surveys are an effective type of evidence to establish acquired distinctiveness.

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