The term “3D trademark” has two possible meanings. Either it is only the shape of the product (pure shape), or it is composed of a combination of the 3D sign with another distinctive element such as a word or a device (combined shape).
Registering pure-shape 3D trademarks for the products is the ultimate goal of the brand owner, but it has become increasingly difficult with time. By reviewing the judicial precedents on the 3D pure-shape trademark applications, it can be found that courts tend to focus on the examination of the distinctiveness of the sign, rather than on the functionality of the shape.
The court’s practice has evolved with time, featuring three periods.
Period 1. Before 2010: Creativity means distinctiveness. For a traditional trademark, a design that is unique and creative is usually considered as distinctive. In the famous Ferrero Chocolate case ruled by the Beijing No.1 Intermediate court in 2007, the court found that the trademark, which represents the packaging of the chocolate, is not the common design in the industry, and is creative. Therefore, the said trademark is able to distinguish the source of the products and is inherently distinctive.
Interestingly, the registration of the Ferrero Chocolate shape was challenged by third parties in an invalidation procedure, but the registration was maintained. This confirmation of the 3D trademark registration may probably have something to do with the fact that, earlier on, the exact packaging of the Ferrero Chocolate had been protected by the Supreme People’s Court (SPC) in an unfair competition case basing on the acquired distinctiveness. This suggests that obtaining protection under the unfair competition law seems to be a good way to prove the acquired distinctiveness of a 3D trademark.
Period 2. 2010-2012: Creativity is not sufficient. After 2010, the assessment of the distinctiveness based on the creativity or uniqueness of the shape was intensely debated, as is reflected in two famous cases: The clover case and the Fanta case.
Both cases were finally brought to the Beijing High Court. Both trademarks were finally rejected. The judgments for the two cases, rendered in 2010 and 2011 respectively, modified the rules of examination of 3D shape trademarks as follows:
(1) Distinctiveness should be ascertained according to the relationship between the trademark and the goods or services it designates; and
(2) Creativity or uniqueness of a shape does not suffice to prove that it has the necessary distinctiveness of a trademark.
Period 3. After 2013: The shape of the commodity or the shape of the packaging has no inherent distinctiveness. In the landmark Nestle case of 2013, the Beijing High Court further developed and refined the rules as follows: It is only when a unique and stable correspondence between the applicant and the sign can be established through use, that acquired distinctiveness can be affirmed.
Based on the above judicial practice, at the end of 2016, the SPC issued the Provisions on Several Issues Concerning the Trial of Administrative Cases involving Granting and Affirmation of Trademark Rights, confirming in article 9 that the shape of a product, or that of the packaging, even unique or first used, can only be protected as a trademark if, as a result of intensive or long-term use, the shape has been perceived by the public as source identifier of the goods in question.
Given the increasing difficulty in registering the pure-shape 3D trademark, brand owners resort to the alternative trade-off of firstly registering a combined shape, usually in the format of “pure shape” + “brand name”. Even if distinctiveness is normally assessed globally or as a whole (article 7 of SPC provisions 2016), this route has become less and less viable in practice as well.
The courts looked at a combined 3D trademark by focusing on the distinctiveness of the visual elements added to the shape.
In the Chivas case, ruled by the Beijing High Court in 2013, the bottle displayed the words “CHIVAS REGAL” and a lion device engraved on the bottle. However, Beijing High Court held that, even with the words and device, these elements were insufficient to distinguish the 3D trademark from a generally used bottle of whisky. The trademark was refused.
In the Perrier Jouet case, the applied 3D combined trademark was composed of a 3D bottle for champagne and flower device elements. The Beijing High court, in its final judgment of 2014, also refused to recognize the combination of shape and devices as distinctive.
The Beijing High Court guidelines. Following numerous precedents afterwards, in April 2019, the Beijing High Court confirmed the trend in its Guidelines on the Administrative Case involving Granting and Affirmation of Trademark Rights. Article 9.8 provides that: “…. Under normal circumstances, the fact that (the 3D trademark) contains other elements such as words or devices does not mean it is distinctive.”
What to do?
In light of the above, we can conclude that the inherent distinctiveness of a 3D trademark (especially pure shape) is, in principle, denied, leaving proving acquired distinctiveness the only option. This, however, is not easy due to the extreme high threshold on the reputation evidence. Another intermediate viable solution seems to be first obtain judicial protection on an unfair competition basis (in the real-world scenario, it is much easier for a judge to accept the protectability of such shape, as in the Ferrero case), and then push for the recognition of the 3D trademark.
He Wei is a partner at Wanhuida Intellectual Property He can be contacted on +86 10 6892 1000 (ext. 378) or by email at [email protected]