In a widely publicized hearing for an administrative lawsuit held on World Intellectual Property Day 2018, the China Supreme Court ruled in favor of a French fashion house seeking a trademark registration to protect the shape of one of its perfume bottles. At this hearing, the China Supreme Court issued a verdict ordering that the Trademark Review and Adjudication Board ("TRAB"), against whom the lawsuit was filed, must re-examine the shape trademark application in issue. While the final destiny of this perfume bottle shape mark is still pending, this high-profile case has aroused the public’s curiosity about whether three-dimensional ("3D") trademarks can be registered in China.
A trademark is a word, design, letter, numeral, shape, scheme of colors, sound or combination thereof that is capable of distinguishing the goods or services of a party from those of others. A trademark is usually two-dimensional, but it can also take the form of a 3D shape, if all other criteria for 3D trademark protection are met.
There are several provisions in the China Trademark Law and judicial interpretation defining and dealing with the registration of 3D trademarks. These provisions are scattered in Article 8, 11 and 12 of the China Trademark Law (2013 Amendment) and Article 9 of the Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases involving Trademark Authorization and Confirmation (2017).
Inherent or acquired distinctiveness
The foregoing provisions essentially establish that for a 3D trademark to be capable of registration, it must be inherently distinctive, that is, depart significantly from shapes commonly perceived by the relevant public and could function as a source identifier and differentiator. That being said, even if a shape fails this “inherent distinctiveness” test, if it has been extensively used in China and has acquired distinctiveness, it is still possible for such shape to obtain a trademark registration. Distinctiveness is acquired, when the public has been educated, through the long-term use of the shape in China, to view it as a trademark. In other words, the relevant public, without the help of any extra verbal elements, could readily connect the shape with a single source and origin of goods or services.
Below is a real example of a 3D trademark being registered in China after it was found inherently distinctive by the court.
FERRERO S.p.A. filed for the shape of the packaging of its Ferrero Rocher chocolates (No. G783985 trademark) in Class 30 designating various types of sweets and chocolates. The China Trademark Office ("CTMO") found that the shape depicted by the trademark in issue was not distinctive and therefore rejected FERRERO’s trademark application. In review, the TRAB upheld the CTMO’s decision. FERRERO appealed to the Beijing No.1 Intermediate Court. In a judgement1 made on November 12, 2011, the court held that as the choice of colors and the packaging depicted by the 3D trademark was not a common one in the industry for sweets and chocolates, the relevant public could readily recognize FERRERO as the producer for such goods attached to the trademark. Accordingly, this 3D trademark in issue was inherently distinctive and should be registered. This marked the first 3D trademark registration granted through a judicial proceeding in China.
If a 3D shape claimed to be a trademark forms a part of the relevant product, the situation will become more complicated because it presents prima facie grounds for refusal due to lack of inherent distinctiveness. Under such circumstances, a 3D shape may be registered only upon proof of acquired distinctiveness.
In the administrative lawsuit of SATA GmbH & Co. KG vs. TRAB before the Beijing High Court, SATA claimed that its trademark, designated on paint spray guns, consists of a blue marking at the bottom of the grip of a paint spray gun; the marking has the form of a platelet and can be seen from below and from three sides of the grip; the marking has a thickness of about 3‒10 mm and a length and width of about 10‒20 mm. The Beijing High Court held in its judgement2 that “where a party claims a part of a product as its trademark, because the trademark forms part of the product, it does not tend to occur to the consumers that the sign is an indicator for the provider of the product; therefore, in principle, the trademark in issue lacks the distinctiveness of a registered trademark. Hence, unless the party can prove that the sign, through use, has already functioned as a source identifier, the party may not obtain approval for an application for the registration of a trademark where the party claimed part of its product serves as the trademark.” This judicial opinion was later embodied as a statutory guideline in Article 9 of the Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases involving Trademark Authorization and Confirmation (2017).3
After a shape mark surmounts the above distinctiveness obstacle, which is in itself very difficult, it may still be refused if the shape mark is purely functional.
A 3D trademark is usually found to be purely functional if any of the following three conditions are met:4
- the trademark in issue consists exclusively of a shape resulting from the nature of the goods themselves;
- the trademark in issue consists exclusively of a shape of the goods that is necessary for achieving a technical effect;
- the trademark in issue consists exclusively of a shape that adds substantial value to the goods.
As mentioned in the foregoing, the significance of this test is, no matter how distinctive a shape trademark is or has become, if an objection is validly raised regarding the pure functionality of the shape itself, the application for such shape will be refused.
The rationale behind this test is that when a shape of a 3D trademark is solely dictated by its function, the grant of protection would inevitably impede competition in the relevant market. Furthermore, a utility patent, which is another type of intellectual property right, but with a much shorter term of protection than a trademark registration,5 has been specially reserved for protection of the functional features of objects. If allowing a trademark registration to cover the functional feature of a shape, this essentially means the holder of such registration will obtain a right similar to a utility patent but with unrestricted term of protection, as long as it is renewed on a timely basis, which could result in an everlasting monopoly. The legal consensus is that an everlasting monopoly for a functional shape, granted through the “back door” of trademark law, would be detrimental to competitors as well as the market at large, because it hurts competition, and also hinders the development and advance of technology.
Below is a real example of a 3D trademark being rejected in China after it failed the functionality test.
Burden of proof
In China, the burden of proof falls upon the trademark applicant to show that the 3D shape under application is distinctive. In addition, if an objection has been validly raised with preliminary evidence as to the functionality of a 3D shape, the applicant shall bear the burden of proof to show that its shape mark is non-functional.
In establishing acquired distinctiveness for a 3D trademark, the following types of evidence are normally useful: overseas or domestic registrations as proof of distinctiveness; use of the trademark in the prior three years in commerce in China; actual evidence of distinctiveness, such as market survey reports.
To prove non-functionality, the applicant must show that its shape does not result from the nature of the goods, and is neither a shape of the goods necessary for achieving a technical effect, nor a shape to add a substantive value to the goods. In the administrative lawsuit of ZIPPO MANUFACTURING COMPANY vs. TRAB before the Beijing High Court, the Beijing High Court’s finding7 might shed some light on this issue for future applicants: “if a shape of a 3D sign is necessary for the use or purpose of the product, or affecting the cost or quality of the product, then such sign is functional; where the feature of a shape would put competitors at a significant non-reputation related disadvantage, the shape is functional. The availability of alternative designs could normally prove that the shape in issue is non-functional, but such alternative designs should be essentially similar in appearance with the shape of the 3D trademark under application.” To illustrate with the perfume bottle in the beginning of this article as an example: a perfume bottle’s function is to hold the perfume, preserve its scent and allow it to be poured out of the bottle. However such job does not render the bottle’s shape functional for the trademark purpose as the shape is not a necessity for the bottle to perform its job. While in the case of a chocolate box in the shape of a heart, the shape is normally considered functional in an aesthetic sense because the shape universally represents “a lover’s heart” and will function to facilitate the sale of chocolates, in a non-reputation related manner.
In China, the criteria for assessing the registrability of 3D trademarks are much stricter and more abstract than the criteria applied for word marks or device marks. Furthermore, due to the public’s, including some trademark examiners’, stereotyped perception, it is also difficult for a trademark applicant to prove the distinctiveness of a 3D trademark and overcome the functionality obstacle. In practice, therefore, it is significantly more difficult to obtain a registration for a 3D trademark than for a word mark or device mark. The IP lawyers at Dechert’s Beijing IP team would be happy to assist you in evaluating whether your 3D trademark is likely to pass the distinctiveness and functionality tests before the trademark examination authorities as well as the courts in China.