CNIPA Reply on “Whether Shape of Goods identical to the Graphics of Registered Trademarks of Similar Category of Goods Constitutes Infringement of Right to the Exclusive Use of the Registered Trademark”

国家知识产权局发布《关于商品形状与他人同类商品注册商标图形一致的行为是否构成侵犯注册商标专用权的批复》

CNIPA has issue a decision as to whether the sale of goods shaped in the same way as a registered trademarks of others constitutes infringement of that trademark.  CNIPA was considering whether the trademarks of Chanel and Van Cleef & Arpels had been infringed by products in the shape of their marks. CNIPA held the marks are well known and distinctive. They have formed a unique correlation with the rights holders, and the relevant consumers close associate the trademarks with the rights owners. Using the graphic pattern of those registered trademarks as the shape of the goods effectively carries the purpose of identifying the source of the goods, which is likely to cause the relevant public to misunderstand as to the source of the goods. Such behaviour is caught under Article 76 of the Trademark Law Implementing Regulations, which states: "The use of a sign which is identical or similar to another person’s registered trademark on the same or similar goods as the name or decoration of the goods, thus misleading the public, constitutes an infringement of the exclusive right to use a registered trademark provided by Article 57(2) of the Trademark Law.”

Source: https://www.cnipa.gov.cn/art/2021/9/10/art_546_169921.html?xxgkhide=1

This article is co-authored by Sophia Hou of Lusheng Law Firm