With respect to the 3D marks for similar goods in the Dior “J’adore” perfume bottle case, the Supreme People’s Court (SPC) set out its opinions on the method of determining distinctiveness, emphasizing that, in determining the distinctiveness of a 3D trademark, consideration should be given to the following: that the exhibits in the case can substantiate actual use, and publicity and promotion of the trademark, with the possibility that the applied for trademark can give rise to the function of identifying the source of the goods as a result, and maintaining consistency in the examination criteria.
The judgment provides a reference for factors to be considered when determining the distinctiveness of a 3D trademark. In recent years, registrations of 3D trademarks have been on the increase. A 3D trademark can be the shape of the good itself, the packaging of the good, or another three-dimensional sign. 3D trademarks differ from 2D trademarks in that, particularly in regards to those 3D marks that consist of the shape of the good itself or the packaging of the good, the relevant public generally does not have the habit of seeing them as a mark of the good. Accordingly, the determination of the distinctiveness of these two types of 3D mark is particularly difficult.
In judicial practice, there have already been several cases revolving around the determination of the distinctiveness of 3D trademarks. As business practice has developed, the design space for 2D marks has shrunk, and as a result the exploration and creation of multidimensional trademarks will in future be a key focus in the operation of commercial marks by enterprises.
Cognitive habits of the relevant public
In business practice, the common use of 2D trademarks over the years has given rise to a pattern of thought among the public that leans toward the two-dimensional. In contrast to seeing the packaging on a good, etc., when the relevant public sees a two-dimensional mark, it is more likely to recognize it as a trademark. Accordingly, as compared to 2D trademarks, the difficulty in determining the distinctiveness of 3D trademarks is mainly related to the identification habits of the relevant public.
In this regard, the author would make the following recommendation. When applying for an enterprise’s 3D mark, full consideration should be given to the different identification habits of the relevant public in respect of different shapes and for different classes, and attempts be made to predict the value of the applied-for 3D trademark on one’s brand operations. With respect to shape, the basic potential for the three forms of 3D mark – i.e., the shape of the good itself, the packaging of the good and trade dress of the good or service – should be recognized as distinctive, and secure registration as a trademark progressively increases in that order.
With respect to class of goods, the business practice of the relevant industry in using 3D trademarks is of great importance. For example, in the automotive industry, the three-dimensional sign on the front of a vehicle has become industry practice, and the relevant public is also intimately aware of this industry practice, with the vast majority of buyers able to distinguish the source of a vehicle by its badge. Accordingly, the registration of a badge as a 3D trademark affords greater likelihood of its being recognized as distinctive.
For an industry whose goods – such as alcoholic beverages – are a liquid, the liquid nature of the good itself robs it of such features as the shape of the good itself. With a view to enhancing the consumer’s ability to distinguish one’s brand, such industries have, in recent years, relied more and more on the packaging of the good to highlight the source of the good and to distinguish one’s good from those of other providers. However, for such industries as the garment industry, even in the case of an ornamental 3D trademark, as the garment industry itself emphasizes ornamentation and, in general, few treat three-dimensional ornaments on garments as a tradition in trademark practice, the relevant public is likely to view the same simply as garment ornamentation, thereby robbing any such 3D mark of its distinctiveness and making its registration close to impossible.
3D mark operating strategy
The recognition of the inherent distinctiveness of a 3D mark is of great significance to the subsequent operation. American courts have two famous standards in respect of such recognitions. The first standard, the Chevron test, requires, in respect of inherent distinctiveness, that the trade dress be arbitrary or fanciful; the second, the Seabrook test, requires the trade dress not to be a common, basic shape or design, to be unique or unusual in the particular field, and not to be mere refinement of a commonly-adopted and well-known form. Whether it is China or the US, “different from the conventional option” is a key factor considered when determining whether a 3D mark can be registered.
In the application for the registration and the subsequent operation of a 3D mark in China, weight should also be given to the utilitarian functionality and aesthetic functionality exceptions. In China, there is little disagreement over the utilitarian functionality exception, but the disagreement over the boundary of the aesthetic functionality exception is more substantial.
The author would argue that understanding the aesthetic functionality doctrine as the “competitive demand” rule is more appropriate. Based on the “competitive demand” rule, the aesthetics of a 3D mark should prevent the registration of such mark only if the exclusivity to the producer would result in the inability to satisfy competitive demand. For example, in such industries as the accessory industry, what the relevant public purchases is the design aesthetics reflected in the good, and if, in such an instance, the registration of such a design as a 3D mark were permitted, the same would result in the inappropriate monopolization of a resource and hamper the development of the industry.
However, not all registrations of 3D marks with aesthetic appeal will give rise to an undeserved competitive advantage. In industries where design aesthetics is not a core value – e.g., a product such as body wash – consumers mainly pay attention to such factors as the degree to which the liquid product cleans, its scent, etc., and not the aesthetics of its external packaging. Even if a body wash that cleans poorly and has an unpleasant scent comes in attractive packaging, it will have few buyers. With respect to products of industries that have differing core values, the application of aesthetic functionality preclusion should be treated differentially.
Zhao Yunhu is an associate at Dentons