Xiangrong Wu December 18 2017 TRAB rules that unusual product shape is eligible for 3D trademark registration Wanhuida Intellectual Property | Intellectual Property - China Xiangrong Wu Intellectual Property FactsDecisionsCommentAlthough registering a three-dimensional (3D) trademark is difficult, a recent Trademark Review and Adjudication Board (TRAB) decision reaffirms the registrability and inherent distinctiveness of 3D marks that comprise the unusual shape of a product.FactsCAR-FRESHNER Corporation (CFC) manufactures the world-famous Little Trees car air fresheners. These iconic products, which were invented in New York in 1952, are shaped like a stylised evergreen tree. China has imported CFC's air fresheners since 1994.On July 10 2015 CFC filed an application (17400404) for the registration of a 3D mark designating "air fragrancing preparations" in Class 3 (Figure 1).Figure 1DecisionsOn May 25 2016 the China Trademark Office (CTMO) refused the application on the basis of the mark's lack of distinctiveness, citing Article 11.1.3 of the Trademark Law.On June 6 2016 CFC filed an application for review before the TRAB, arguing that:the 3D mark, which is inherently original, is an unusual shape for air fresheners; andthe mark's distinctiveness has been further strengthened by its continuous and extensive use in China.In addition, CFC submitted:samples showcasing the shapes and packaging of various other air fresheners to prove its mark's uniqueness; andan array of evidence of use to prove the mark's well-known reputation.On January 19 2017 the TRAB rendered its decision, affirming that the mark is distinctive enough to function as a source identifier and is thus registrable as a trademark.CommentThe examination of the inherent distinctiveness of a shape is still a complex matter and no rules govern what criteria should be applied to determine whether a 3D mark is inherently distinctive. However, where the shape of a product is unusual, in the sense that it has no direct relevance to the product itself, this will facilitate its registration as a 3D mark, as examiners tend to treat decorative, non-functional characteristics positively.The 2005 version of the Trademark Examination and Adjudication Criteria, jointly issued by the CTMO and the TRAB, stipulated that a 3D mark comprising an unusual shape of a product or other distinctive elements would be deemed distinctive. The agencies introduced two examples to demonstrate their argument, one of which designated a nutritional supplement (Figure 2) and one of which designated automobiles and automotive components (Figure 3).Figure 2Figure 3Following the 2013 revision of the Trademark Law, the above examples were removed from the criteria. Although it is unknown whether this was because the CTMO and the TRAB have changed their attitudes in this regard, the registration of CFC's 3D mark may demonstrate that the TRAB still applies the doctrine of recognising the inherent distinctiveness of an unusual product shape.The Chinese courts have also failed to develop reliable jurisprudence on this matter. However, the Supreme Court shed some light on the registrability of 3D trademarks in the Provisions on Several Issues Concerning the Hearing of Administrative Cases involving the Granting and Affirmation of Trademark Rights 2017, which states that:"Where an application is filed to register the shape or partial shape of a product as a 3D mark, if under most circumstances, the relevant public is not likely to take such sign as a source identifier of the goods to which it is attached, such sign should be found non-distinctive as a trademark.The fact that a 3D sign has been originally created by or firstly used by the applicant shall not necessarily be admitted as proof of distinctiveness of such sign. Whereas an inherently non-distinctive sign as mentioned in the first paragraph has become, through long-term or extensive use, a source identifier of the goods to which it is attached by the relevant public, the Court may recognize such sign as distinctive."It is likely that "shape of a product" also covers the unusual shape of a product. If this is the case, questions arise as to whether all 3D marks comprised solely of a product's shape are not inherently distinctive and whether distinctiveness can be acquired only through use. Unfortunately, no case law is available to demonstrate the courts' approach in this regard.Protecting a product's shape as a 3D mark is of great practical significance and the number of applications concerning 3D marks may continue to increase. As such, unified examination criteria regarding the inherent distinctiveness of 3D marks is desirable in order to increase the predictability of registering a product shape as a 3D mark in future.For further information on this topic please contact Xiangrong Wu at Wanhuida Peksung by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.