China: Judgment Of Distinctiveness Of Trademarks Combining 3D Marks And Other Elements

Last Updated: 9 December 2016
Article by Xiaomeng Dong and Jianjun Fu

Trademarks combining 3D marks and other elements are different from pure 3D trademarks with "3D appearances constituted by commodity packaging or by commodities," and from trademarks of ordinary types like word trademarks and device trademarks. This paper will analyze three questions relating to the distinctiveness of trademarks combining 3D marks and other elements.

I. Three questions arising from trademark examples in China

(i) Examples of trademarks combining 3D marks and other elements that have been approved for registration

The following trademarks are made up of 3D marks and other words on commodity packaging. All of them have been allowed for protection by the Trademark Office.

Left: Trademark No.: G681389

Designated Goods: Beer of class 32

Right: Trademark No.: G769520

Designated Goods: Soda drinks of class 32

Left: Trademark No.: 3276252

Designated Services: Restaurants, etc. of class 43

Right: Trademark No.: 3240987

Designated Goods: Wine (beverage), etc. of class 33

 (ii) Examples of trademarks combining 3D marks and other elements that were refused registration

The following trademarks are also made up of 3D marks and other words/devices of commodity packaging, but were refused registration in China:

Left: The trademark is made up of letters CHIVAS REGAL, a lion device and the shape of a bottle

Trademark No.: 3276252

Designated Services: Wine, etc. of class 33

Right: The trademark is made up of a flower device and the shape of a bottle

Trademark No.: 6318971

Designated Goods: Liquor, etc. of class 33

(iii) Three questions concerning "judgment of distinctiveness of trademarks combining 3D marks and other elements" thus arising from the above examples

Judgment of distinctiveness of trademarks combining 3D marks and other elements mainly involves the following three questions:

Question 1: What type of trademark do trademarks combining 3D marks and other elements belong?

Question 2: How should the distinctiveness of the trademarks combining 3D marks and other elements be determined?

Question 3: How should the scope of protection of the trademarks combining 3D marks and other elements after trademark registration be determined?

II. Analyses of the three questions

 (i) Question 1: What type of trademark do trademarks combining 3D marks and other elements belong?

1. According to the Chinese law, trademarks combining 3D marks and other elements are "combined trademarks."

According to Article 12 of the Trademark Law, it has been enshrined in the law that a "three-dimensional sign" is a "shape."

According to Article 8 of the Trademark Law, it has been enshrined in the law that three-dimensional marks, words and devices can be used as trademark elements. According to the law, each and every element can be combined to make combined trademarks.

Take the six trademarks listed above for example –Trademarks combining 3D marks and other elements like the above six trademarks are "combined trademarks" provided in Article 8 of the Trademark Law.

(ii) Question 2: How should the distinctiveness of the trademarks combining 3D marks and other elements be determined?

1. According to the Chinese law, the distinctiveness of trademarks combining 3D marks and other elements should be judged on the whole, and four factors may be taken into consideration.

Article 11 of the Trademark Law provides, "The following marks shall not be registered as trademarks:...(2) marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods..." According to such provision, only trademarks that "merely" indicate the function of goods do not have distinctiveness.

For trademarks combining 3D marks and other elements, the 3D marks are always the general shape of commodity packaging, and are unlikely to be identified by the consumers as trademarks. Therefore, the inherent distinctiveness of 3D marks is naturally weak. But if the other elements in a combined trademark are highly distinctive, such combined trademark may not be a trademark that "merely" indicates the function of goods, as provided in Article 11 of the Trademark Law.

Now how should the distinctiveness of trademarks combining 3D marks and other elements be determined?

Article 5 of Opinions of the Supreme People's Court on Several Issues Relating to Trials of Administrative Cases Concerning the Grant and Confirmation of Trademark Rights (hereinafter referred to as "the Opinions") provides, "While trying administrative cases concerning the grant and confirmation of trademark rights, the people's court shall examine and judge whether a trademark has distinctive features on the whole according to the general knowledge of the public concerned of the designated goods of the trademark in dispute. Where the descriptive elements in the marks do not affect the overall distinctive features of the trademarks, or the descriptive signs are demonstrated in such a unique way that enables the public concerned to distinguish the sources of goods with them, such marks shall be identified as having distinctive features."

According to Article 5 of the Opinions, the distinctiveness of trademarks shall be judged on the whole. The combinations of 3D marks and other elements belong to combined trademarks set in the Trademark Law, and are a type of trademarks. The distinctiveness of combined trademarks shall be judged on the whole. It indicates that (1) a trademark can't be directly identified as being not distinctive just because the 3D mark in it is not distinctive; (2) the elements of a combined trademark shall be analyzed separately so as to judge whether such combined trademark is distinctive on the whole. Firstly, it is the 3D mark part, which is not that likely to be identified by the consumers as a trademark, so it lacks distinctiveness naturally. However, as a part of a combined trademark, it is inappropriate that a 3D mark is not original at all—because if it is too ordinary (for example, if it is a product appearance or package that has no characteristics at all, nor any originality, or sense of design in the industry), the possibility of its being protected as a part of a trademark is slim. Under such circumstance, the protection of a combined trademark can be replaced by the protection of word/device and other significant elements as two-dimensional trademarks. Given that, as a part of combined trademarks, 3D marks shall at least be substantially original in the industry (since it is the protection of combined trademarks instead of separate protection of 3D marks, the requirement on the originality of 3D marks here can be low, even minimum originality). Secondly, it is the part of other word/device elements. Generally, the minimum originality of a 3D mark can't make a combined trademark sufficiently distinctive to get registered. The distinctiveness of other word/device elements has to be taken into full consideration. If other word/device elements are distinctive, hold prominent positions in the combined trademark and can easily be identified by the consumers as trademarks, such combined trademark will thus become distinctive. Therefore, a combined trademark is made up of "distinctive word/device" and "3D mark of minimum originality." For registered combined trademarks, the main part to be protected shall be "distinctive word/device." (Generally, "3D marks of minimum originality" are so less distinctive that they amount to relinquishing the exclusive right to trademark use.)

Based on the provisions of the Trademark Law of China and the Opinions, the following four factors may be taken into consideration to judge the distinctiveness of trademarks combining 3D marks and other elements: (1) whether the 3D marks are distinctive enough to be registered; (2) whether the 3D marks are of minimum originality; (3) whether the other word/device elements are distinctive; (4) if the other word/device elements are distinctive, judge whether the 3D marks are at prominent places in the trademarks and easily identified by the consumers as trademarks. 

Considering the above four factors, the overall distinctiveness of a combined trademark may be manifested as the following five circumstances:

2. Foreign legal provisions, judicial precedents and trademark registration examples

Foreign related practices abroad can be used as a reference for administrative and judicial examination of trademarks in China.

(1)Trademark cases in the UK

  • Case of trademark opposition against "YAKULT & beverage packaging":

Japanese company Kabushiki Kaisha Yakult Honsha applied for registering trademark "YAKULT & beverage packaging" (see below for trademark device) in the UK, and the trademark was designated to be used on "yogurt" of class 29, "tea" of class 30 and "soft drinks" of class 32. Malaysian company MALAYSIA DAIRY INDUSTRIES PTE LIMITED objected such trademark. One of the grounds it held was that the trademark was not distinctive and violated the provision of Article 3 (1) of the UK trademark law, that is, "trademarks which are devoid of any distinctive character shall not be registered."

After hearing the case, the Intellectual Property Office of the UK identified: The opposed trademark was a combined trademark made up of two parts—word YAKULT and the 3D mark of the shape of container, so the distinctiveness of such trademark shall be judged on the whole. Comprehensive and correct consideration of it must be made. An overall analysis of it should be made according to the knowledge of the public concerned of the trademark and commodity nature. Word YAKULT in the trademark was highly and inherently distinctive. Moreover, YAKULT was highly distinctive and identifiable in the combined trademark. YAKULT was a highly distinctive and eye-catching element in the combined trademark...the shape of container in such combined trademark was inherently distinctive. However, considering the trademark on the whole, highly distinctive word YAKULT in it was enough to cause the consumers concerned (general public) to think that the trademark on the whole can distinguish sources of goods. Finally, the Intellectual Property Office of the UK held that the trademark had overall distinctiveness, so it ruled that the opposition was untenable, and approved the registration of the opposed trademark.

In the case of opposition against trademark "YAKULT & beverage packaging," although the packing bottle of the product was not distinctive in the registration sense, it had a certain sense of design and minimum originality. Besides, the trademark contained distinctive word YAKULT, and such word occupied a prominent position in the combined trademark. Therefore, the trademark was identified as distinctive on the whole.

(2) Related provisions and trademark examples in the US

  • Trademark Manual of Examining Procedure (TMEP):

The U.S. TMEP provides: ...the examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive unless the applicant claims that the mark has acquired distinctiveness. A refusal on the ground that the entire proposed mark is not inherently distinctive generally is not appropriate if the mark includes additional distinctive matter beyond just the product design, such as words and/or images. In such situations, the applicant may be required to disclaim or claim acquired distinctiveness in part as to any non-inherently distinctive elements.

  • Trademark examples in the US

U.S. combined trademark No. 78656060 is made up of words "NEW! SCOTTS NATURE'S CARE ALL PURPOSE PLANT FOOD" and product packaging (see below for trademark device), and the United States Patent and Trademark Office describes the trademark as "product design, plus word, letters of alphabet and/or numbers." The trademark, designated to be used on "plant food," was registered successfully in June 2007.

Although the 3D mark in such combined trademark, that is, the outer product package, lacks distinctiveness in the sense of trademark registration, it is red, with a handle and a black cover, so it is of minimum originality. Words "NATURE'S CARE" in the trademark are distinctive in the registration sense, and had been registered by the same owner in the United States[1]. Besides, words "NATURE'S CARE" hold a prominent position in the combined trademark, so it is likely to be identified by the consumers as a trademark. Because of the product package of minimum originality and words that are distinctive in the registration sense, the trademark is distinctive on the whole, so the registration of it was approved by the United States Patent and Trademark Office.

In line with the above, according to the Chinese law and by referring to foreign practices, it is legal and reasonable to judge the distinctiveness of trademarks combining 3D marks and other elements on the whole while taking into consideration four factors.

 (iii) Question 3: How should the scope of protection of the trademarks combining 3D marks and other elements after trademark registration be determined?

1. According to the Chinese law, the scope of protection of the trademarks combining 3D marks and other elements shall focus on the distinctive parts of such trademarks

 (1) The scope of protection of trademarks combining 3D marks and other elements shall focus on their distinctive parts

Article 59 of the Trademark Law provides, "An exclusive rights holder of a registered trademark shall have no right to prohibit other people from using in normal use the common name, logo or model contained in the relevant registered trademark or the quality, principal raw materials, functions, uses, weight, quantity, geographic name or other features that are explicitly expressed in the registered trademark. Where three-dimensional registered trademarks are by the product's own nature essentially the shape of the product, and provide the goods bearing the mark with a specific value, a trademark holder shall have no right to prohibit other parties from reasonably using a similar shape to realize a similar special or technical effect." Given that the 3D marks in combined trademarks may have minimum originality only, and are not distinctive enough to get registered, no one shall have the right to prohibit other people from reasonably using the parts of minimum originality of such trademarks.

According to the above legal provisions, it is inadvisable to give even protection to all elements of registered trademarks combining 3D marks and other elements, but protection should be mainly given to their distinctive parts. It is common in registered combined trademarks that the 3D marks in them are product packaging or product design, and are of minimum originality and that their distinctive parts are word/device elements. The protection of trademarks combining 3D marks and other elements shall focus on their distinctive parts, that is, the distinctive word/device elements in them. After registration, combined trademarks do not prohibit other parties from reasonably using the 3D marks that are of minimum originality and are not yet distinctive enough to get registered.

(2) The application of "the scope of protection of trademarks combining 3D marks and other elements shall focus on their distinctive parts" in cases concerning administrative grant and confirmation of trademark rights and civil infringement cases

Specifically, in cases concerning administrative grant and confirmation of trademark rights and civil infringement cases, how should "the scope of protection of trademarks combining 3D marks and other elements shall focus on their distinctive parts" be applied?

  • In cases concerning administrative grant and confirmation of trademark rights, to prevent later registration of similar trademarks, the 3D mark parts (namely "the shape") of the later combined trademarks may be similar to those (namely "the shape") of the prior combined trademarks, but their distinctive word parts must not be similar. That is to say, in cases concerning administrative grant and confirmation of trademark rights, the principle of judgment of general combined trademarks may be followed to judge similar trademarks.
  • In civil infringement cases, to prevent infringement act of similar trademarks, the principle of judging similar trademarks may also refer to the principle of judging general combined trademarks. In 3D combined trademarks, we can suppose that their shape part is not distinctive, so if a trademark accused to be infringing is the same as or similar to another trademark only in the part that is not distinctive (the shape part), but its distinctive part is not similar to the latter, the two trademarks shall be identified as dissimilar in general. But if their distinctive parts are similar, but the shapes in them are totally different, they remain dissimilar following the principle of overall judgment. That is, for 3D combined trademarks in civil infringement cases, only when the distinctive parts and the shape parts (for 3D combined trademarks, visually, the outer shape always occupies more space) are similar do they constitute overall similarity.

The two judgment principles mentioned above on the one hand demonstrate that, in cases concerning administrative grant and confirmation of trademark rights, prior registered trademarks can be given greater scope of protection, that is, they can prevent later registration of similar trademarks to an even greater extent and in bigger scope; on the other, they demonstrate that, in civil infringement cases involving trademarks, relatively strict restriction of the scope of trademark protection shall be carried out in order to prevent the right owners from improperly occupying public resources so as to promote fair market competitions.

2. Referential trademark registration examples and judicial precedents abroad

(1) Related trademark cases in the UK

In the above case of trademark opposition against "YAKULT & beverage packaging," the opponent claimed that the opposed trademark lacked distinctiveness, and was similar to its prior registered trademark. Below is a comparison of both trademarks:

Although the 3D marks (product packaging) in the above two trademarks are relatively similar, the words in them are significantly different. The Intellectual Property Office of the UK finally identified them as dissimilar on the whole and unlikely to cause confusion in the consumers. Of the grounds held by the Intellectual Property Office of the UK, one was that the trademark opponent also clearly admitted "VITAGEN is the distinctive identifying element of the citation." As can be seen, the scope of protection of such trademark was mainly word "VITAGEN," that is, the distinctive word part of the combined trademark.

 (2) Related provisions and trademark examples in the United States

  • Trademark Manual of Examining Procedure (TMEP):

As aforesaid, for trademarks combining 3D marks and other elements, the U.S. TMEP clearly provides that the applicants may be required to disclaim or claim acquired distinctiveness in part as to any non-inherently distinctive elements. That means, in trademark examination practices, the U.S. mainly protects the distinctive elements of combined trademarks.

  • Trademark examples in the US

Take combined trademark No. 79050677 (see below for trademark device) in the U.S. for example, the United States Patents & Trademarks Office clearly indicates: the trademark right owner disclaims the exclusive right to use the packing box design.

The United States Patents & Trademarks Office requires the trademark owner to clearly disclaim the exclusive right to use the packing box design, indicating that the protection of such combined trademark mainly focuses on distinctive words/images.

In line with the above, according to the Chinese law and by referring to foreign practices, it is legal and reasonable that the scope of protection of trademarks combining 3D marks and other elements focuses on their distinctive parts.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
CCPIT Patent & Trademark Law Office
HFG Law & Intellectual Property
CCPIT Patent & Trademark Law Office
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
CCPIT Patent & Trademark Law Office
HFG Law & Intellectual Property
CCPIT Patent & Trademark Law Office
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions