The Ouhai District People's Court in Wenzhou recently affirmed the significance of taking a global view when assessing the similarities between an allegedly infringing product and a 3D trademark.

Facts

Martell is one of the world's oldest cognac houses, having been in existence for three centuries. One of its products, Martell XO, is well known to the Chinese public due to its quality and unique bottle design (Figure 1). The shape of the bottle has been registered as a 3D trademark in China in Class 33 since 14 April 2008.

Martell filed a lawsuit before the Ouhai District People's Court against the Chinese manufacturer of Louis Baron XO brandy (Figure 2), the bottle of which was almost identical to Martell's 3D trademark.

Figure 1

Figure 2

Decision

The court ruled in Martell's favour. In its judgment, it specified that when assessing the similarities of an allegedly infringing product and a 3D trademark, it is necessary to take a global view and determine whether the shapes are likely to be confused by the relevant public.

As regards damages, the court considered the scale of the online sales of the infringing product and upheld Martell's claim of Rmb950,000 in full.

Comment

This case confirms that in civil lawsuits involving 3D trademark infringement, it is essential to demonstrate that the shape fully functions as an indicator of the product's source. It is therefore necessary to:

  • accurately define the features of the 3D trademark (ie, its scope of protection); and
  • submit all necessary evidence concerning the reputation that it has acquired.

For further information on this topic please contact Du Tong or Yongming Fan at Wanhuida Peksung? by telephone (+86 10 6892 1000) or email (dutong@wanhuida.com or fanyongming@wanhuida.com). The Wanhuida Peksung? website can be accessed at www.wanhuida.com and www.peksung.com.

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