Right before your Christmas vacation we are out with the last issue of GossIP, disclosing some IP, Tech and Food law cases.
Registering a 3D trademark is always a bit tricky, and maintain it is even more difficult. We disclose here the case of Van Cleef & Arpels and explain why the famous French jewels luxury company lost the trademark in China on its iconic Alhambra design.
Still on IP topic, we discuss the major changes in the Patent Law that has been announced to go into force in June 2021.
News regard, between others, the protection period for patents, partial design protection, pharmaceutical patents, compensations and damages, and of course good faith, which is a helpful step in the battle against copied patents.
A break with an amazing news regarding Fabio Giacopello and then we go deep on the tech law with 2 articles explaining the new measures for the protection of trade secrets.
We close this November-December GossIP issue with an analysis of the measures taken by the State Administration for Market Regulation regarding food labeling, topic of great interest for product manufacturers, operators and other stakeholders.
Why Van Cleef & Arpels lost its 3D trademark
By Ariel Huang
3D Trademark for "four-leaf clover" registered in China
On November 19, 2014, Van Cleef & Arpels filed for registration of a 3D trademark No.15736970 for class 14 on goods "watch; ring ( jewelry); bracelet ( jewelry); earrings; necklace (jewelry); jewelry; watch cases" with the Chinese Trademark Office. The application was approved to be registered on January 7, 2016.
Disputes on 3D trademark distinctiveness
On April 2, 2018, a natural person BI Qingyu filed an invalidation against the abovementioned 3D trademark based on the lack of distinctiveness in accordance with Article 11.1(3) of the 2013 Trademark Law. After reviewing, the CNIPA declared the invalidation.
The CNIPA (prior the TRAB) deems the mentioned 3D trademark is not easy to be recognized as a trademark by the public and cannot play the role of distinguishing products. Furthermore, the evidence provided by Van Cleef & Arpels is insufficient to prove its acquired distinctiveness.
Van Cleef & Arpels appealed to the Beijing IP Court. The focus of the first instance is still the distinctiveness of the 3D trademark. The Court decides to support the CNIPA and deem:
- Even if the "four-leaf clover" is an original design, the inherent distinctives will not be affected by its originality. In actual use, the pattern is easily regarded as the shape of products by consumers, and it is difficult to distinguish the source of product.
- Even if the four-leaf clover products have been widely promoted
and sold by Van Cleef & Arpels in the Chinese market, they
cannot prove the use of such pattern is Trademark Use.
In the nature of lacking inherent distinctiveness, the acquired distinctiveness of the pattern in the products jewelry, necklace ( jewelry), etc. cannot be proved sufficiently.
Therefore, Beijing IP Court rejected the request of Van Cleef & Arpels in the first instance. Van Cleef & Arpels further appealed to Beijing High People's Court. The case is now pending in the second instance.
How to review 3D Trademark distinctiveness
Van Cleef & Arpels' "four-leaf clover" jewelry is quite famous in China but it is still rejected as a 3D trademark during the aforesaid invalidation and the first instance of the on-going lawsuit.
Then, how to create and demonstrate 3D Trademarks of distinctiveness?
The answer lies in two aspects: 1) making sure that the trademark pattern itself is distinctive in nature; 2) If not, collecting sufficient evidence to prove its acquired distinctiveness.
It is not easy for applicants to meet the requirements of trademark distinctiveness when designing the 3D trademark. To make it clear to understand, we can look it from the perspective of ordinary consumers.
When we see a certain package or 3D character, we can instantly associate to its provider without carefully identifying the word, graphics and other "trademark elements".
In this regard, the previous package or 3D character assumes the role of distinguishing the source of product, and thus has the distinctiveness in the sense of a trademark.
In the example below, the 3D trademark on the left is rejected, while the one on the right is registered.
Furthermore, to avoid overlap with Design rights, the examination on the distinctiveness of 3D Trademarks tends to be stricter than 2D trademarks. It does not only require the pattern to be distinctive in nature, but also requires the relative public to take the pattern as a sign indicating source of products.
If the relative public takes the pattern merely as (part of) the shape of the products rather than a trademark, the pattern cannot play the role of distinguishing products and thus will not be deemed as Trademark Use.
Such point has been stipulated in Article 9 of Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases Involving Trademark Right issued in 2017:
Where an application for registration as a trademark is made regarding a three-dimensional sign originating from the shape or part of the shape of the products itself, as it is hard for the relevant public to recognize the trademark as a sign indicating the source of the products in general circumstances, such sign generally possesses no conspicuous feature as a trademark.
The sole creation or the earliest use of such shape by the applicant cannot be definitely identified as the existence of conspicuous features as a trademark.
However, lacking distinctiveness in nature does not mean absolute impossibility in obtaining a registered 3D Trademark.
If the Applicant has sufficient evidence to prove its acquired distinctiveness through use, it can be registered later.
For example, the superstar in chocolate world, Ferrero Rocher: its golden-wrapped chocolate as 3D trademark is finally registered in China (IR No. 783985) by FERRERO
S.p.A. after rejection appeal.
3D Trademark Specimen of Ferrero Rocher
From the legal perspective, perhaps Van Cleef & Arpels' 3D trademark is indeed facing the risks of lacking distinctive in nature. Nowadays, more and more designers use four-leaf clover graphics into their jewelry collection, so it is deemed as a normal shape instead of trademark by consumer. Breakthrough of the case depends largely on whether the evidence submitted by Van Cleef & Arpels' should be deemed as Trademark Use.
Anyway, Van Cleef & Arpels also has different design patents granted in China, including the Alhambra series. Therefore, if the lawsuit loses finally, it won't cause a big storm for the brand within the life of those design patents.
In addition, from the consumer perspective, I believe, for many jewelry lovers, the classic four-leaf clover design is still the instantly recognizable symbol of Van Cleef & Arpels and the message of good fortune at its heart.
As said by Jacques Arpels - the designer of four-leaf clover Alhambra jewelry collection - "To be lucky you have to believe in luck". Which is why good luck symbols and charms have been at the heart of many Van Cleef & Arpels creations since the 1920's.
The invalidation against No. 15736970 is still pending in the second instance. Hoping the four-leaf will bring the luck to the brand this time as usual.
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.