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

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.