Product design is playing an increasingly important role in commercial competition nowadays. Other than product quality, it is the design of a product that draws consumer’s attention. A well designed product is more likely to impress consumers with its fashion appearance. This is witnessed by intellectual property litigations between Apple and Samsung. Recently, the author was made attorney in several intellectual property license or infringement cases concerning product shape or packaging. This sort of cases is more

comprehensive due to the legal issues involved such as patent, copyright, trademark and unfair competition. In this article, the intellectual property protection over the above mentioned industry marks will be discussed, followed by a description of legal practice from domestic and abroad as well as Chinese relative laws and regulations, in order to offer a few commonplace remarks by way of introduction so that others may come up with valuable opinions.

  1. Protection of designs

It is common for an enterprise to protect its dimensional design and packaging through designs registries. On the other hand, some packaging that bears history and trade reputations, designs only offer 10 years of protection and at the same time might be cancelled due to defections in novelty and creativity. After the expiry of the design, it would be easily imitated and become ordinary. One can argue that there are other ways to protect it, but it is difficult to submit evidence to prove the prior rights. Regarding this issue, other protection methods will be discussed in the following sections.

  1. Problems of dimensional trademark protection

Comparing to patent, trademark could enjoy eternal protection by extension without the precondition of novelty and creativity. Therefore, more enterprises are seeking answers from trademark protection.

Although it is not explicitly stated in Trademark Law that dimensional marks could be registered, it only requires the marks could “serve to distinguish the goods of a natural person, legal person, or other organization from those of another”, or “has acquired distinctive features through use and is readily distinguishable”. Article 12 of Trademark Law states that no application for registration of a three-dimensional sign as a trademark may be granted, where the sign merely indicates the shape inherent in the nature of the goods concerned, or it is only dictated by the need to achieve technical effects or the need to give the goods substantive value.

There is no ground to blame this regulation because the purpose of trademark is to distinguish the origins of goods or services while simultaneously concerning the reputation of the

enterprise and the products. However, if the three-dimensional trademark is the original shape of the goods (i.e. lighters, chocolates), or is the packaging of the goods (i.e. wine bottles), consumers will not regard it as trademark. Even huge amount is invested in the development and design of the goods, which gives beauty to the product, these features are not the objects that will be concerned when considering trademark distinctiveness, because it is unlikely for consumers to distinguish origins according to shape and packaging. Therefore, there are few three-dimensional trademarks approved in China, and most of them are supplemented by relative characters or logos to enhance the distinctiveness of the overall appearance of the trademark. The allegedly infringing enterprises usually own their graphic trademark. They indicate their own information such as factory name, address, product name and trademark in words or graphics when using other’s packaging or design. It is hard to prove confusion or misleading under this scenario, thus unlikely to be convicted trademark infringement according to China’s law-enforcement and administration of justice. Taking wine bottles

for instance, when imitating similar bottle shapes, the design and aesthetic of the bottle only plays a role of drawing attention and promoting sales. It is the bottle label that carries the origin of the goods. Average consumer would not mistake two type of wine with different names or functions (i.e. medicinal liquor, brandy and wine) just by looking at similar bottles.

These reasons lead dimensional trademark protection to a predicament. That is also why lots of enterprises and scholars believe dimensional trademark protection has entered into a bottleneck, and successful cases are hard to find from the record of legal practice.

  1. Protection over package and decoration of famous commodities

Article 5 of Anti-Unfair Competition Law states that one shall not use the specific name, package, decoration of the famous or noted commodities, or use a similar name, package, decoration of the famous or noted commodities, which may confuse consumers distinguishing the commodities to the famous or noted commodities. Compared to decorations of words or graphics, product shape is integrated with product itself, where no law explicitly rules the protection over “decoration of the famous or noted commodities”. It is also controversial in legal theory. In the next section, relative rules of America will be examined and be used to compare with domestic cases in order to illustrate the issue.

In American law, “Trade Dress” refers to the overall appearance of the commodity, including packaging and configuration. In Two Pesos, Inc. v Taco Cabana, Inc., the Supreme Court of United States held that an inherently distinctive decoration (in this case refers to the outer and inner decoration and design of a restaurant) shall be protected by Article 43(a) of Trademark Law. It is not necessary to prove the design has acquired second meaning, which decides whether or not consumers consider it as origin of the commodity. However, in Wal-Mart Stores, Inc. v Samara Brothers. Inc., the Supreme Court of the United States changed its holding and emphasized the difference between the protection over product packaging and product shape. Firstly, the Supreme Court believed the profile and shape of a product is lack of distinctiveness. For some of the word trademarks or packaging, the inherent distinctiveness resources from the fact that words and packaging are solely used to distinguish the origin. Consumers tend to use words and package as the mark distinguishing origin. Speaking of commodity’s profile, it’s more practical and artistic rather than a utility indicating the origin. Therefore, for the profile to acquire trademark protection, one of the preconditions is to acquire second meaning and be capable of distinguishing product’s origin.

In China’s legal practice, shape of the product is - seldom mentioned in decoration protection. Recently, in the case of - “distinctive decoration of M&G stationery” [(2010) MIN-TI-ZI No.16], the Supreme Court explicitly held that shape, once acquired distinctiveness and second meaning, should be protected by Article 5(2) of Anti Unfair Competition Law. According to this, China’s protection over product’s shape is actually identical with that of the United States.

The protection over “decoration of famous commodities” is subject to “confusion”. In real life, the allegedly infringing enterprises would indicate their trade name or trademark, thus lead the protection to the same dilemma dimensional trademark once entered into. The infringement is likely to be denied because of the indication of trade name and trademark on the package.

  1. Copyright protection

For the moment, the dimensional shape of product’s packaging and design is treated as graphic work (same as blue print) or artistic work while applying for copyright registration and

certificate. The work of applied art protected by copyright usually are required by most courts to acquire certain level of artistic and aesthetic since they are categorized as artistic work. For instance, the costume of Beijing opera is protected as work of applied art while ordinary clothes will not enjoy same protection.

In terms of graphic work, they have to conquer the threshold of “copy” because the production process is a process of copying from the blue print. In Chinese legal practice, it is widely accepted that when conversing graphic work to dimensional objects, it’s a reproduction process of the original design only to make it dimensional without changing its pattern. The origin of the dimensional object could be easily identified thus copyright protection could be realized. When faced with ordinary industrial design, a layman might not distinguish whether the dimensional object comes from graphic design or not. Therefore, making a dimensional object out of a graphic design shall not considered imitation subjected to copyright law.

Comparing to several above mentioned protection, copyright protection has its own advantage. For example, copyright infringement does not require confusion; the protection term is longer; and the protection is not limited by territory. Thus, since packaging design belongs to industrial production as well as art, copyright protection might be a good option for dimensional work.

  1. Principled protection of Anti-Unfair Competition Law

As stated in Intellectual Property Judicial Protection of Chinese Court (2011) published by Supreme Court in 2012, “as the competition become fierce and business model become various, the amount of illegal action is rising and more cases are seeking application of Anti-Unfair Competition Law principle.” Currently more and more cases claim to apply Article 2 of Anti-Unfair Competition Law which states “managers shall abide by the principle of voluntariness, equality, impartiality, honesty and good faith, and also adhere to public commercial moral in their business transactions. ‘Unfair competition’, in this law, means activities made by managers who damage the others’ legal rights and interests, disturb the order of social economy and violate the provisions of this law.”

Speaking of the design and package of industrial products (or at the same time with artistic), the right owner invests in all means including hiring designers, exhibiting and advertising the packaging, the uniqueness of the design, artistic, level, history of the product. It is obviously against the principle

of impartiality and honesty if others take advantage of this investment. Other than that, the duplication and imitation is likely to communize the design thus damage the right owner.

Therefore, when it is impossible to prove the confusion caused to dimensional trademark or unique decoration of a famous commodity, or when designs expires in 10 years and copyright expires in 50 years, or when the requirement of artistic is not met, it’s reasonable to use this principle for protection.

To sum up, intellectual property law protection is a balance between individual privilege and public interest. In order to develop technology, improve social creativity, promote culture diffusion, maintain market order and protect consumer’s right, laws protect individual’s rights as well as taking care of public interest. That leads to differences in protection period, strength, requirement and defense. It will always been the goal of intellectual property legislation, administration and enforcement to protect the enterprises and public interest at the same time.