The China National Intellectual Property Administration (CNIPA) issued Guidance on Distinctive Character for Non-traditional Trademarks on 29 December 2023. In the second of two articles, Ling Zhao and Shufang Zhang summarise how the Guidance affects colour combination and sound marks.
Please read the first part of this article, which covers 3D trade marks, on the Class 46 blog here.
Colour combination trade marks
A colour combination trade mark refers to a trade mark consisting of the combination of two or more colours in a particular manner. The scope of protection of colour combination marks is limited to the combination of the colours used in a particular manner and does not include specific shapes.
The shapes presented in the trade mark specimen are excluded from the scope of protection. A colour combination mark can be used for the whole or part of the goods or the packaging of the goods and can also be used for carriers of services.
Colour combinations are liable to be recognised as the appearance of product, packaging or decoration of a service carrier or decorative design and are generally considered as non-distinctive.
Colour combination marks can obtain distinctive features only after a fixed connection is established between the combination of colours and the trade mark applicant through long-term and extensive use.
Whether the colour combination is original or first used by the applicant does not necessarily indicate that it bears distinctive features as a trade mark.
The applicant must submit a description of the colour combination mark and the way it is to be used on the goods or services.
Figure 1
According to the Guidance, when a colour combination mark is composed of the following elements, the mark is considered to lack distinctiveness when it is:
- the natural colour or common colour combination of the designated goods. For instance, as the colour combination of figure 1 is a commonly used colour combination on an electric grinding machine, this sign is considered to lack distinctiveness when used on "electric grinding machine";
- the regular form of the packaging of the goods with a colour;
- the common colour combination of the place of designated services.
Evidence needs to be submitted to prove acquired distinctiveness by long-term and extensive use of the mark and the stable connection between the colour combination mark and its designated goods or services.
Sound marks
Sound marks are trade marks consisting of sounds that can identify and distinguish the source of goods or services. A sound trade mark may consist of musical sounds or non-musical sounds such as the sounds of nature, humans or animals or sounds with both musical and non-musical elements.
Unlike word or device marks, sound marks rely on sound carriers and are recognised through the sense of hearing. As sounds are easily recognised by consumers as sound produced by the goods themselves, background music, advertising phrases and the like, a sound mark is usually not regarded as a trade mark indicating the source of the goods or services.
In general, when filing an application for a sound mark, it is necessary to submit evidence to prove that the sound has acquired distinctive features through long-term and extensive use.
Where filing an application for a sound mark, a sound sample and statement describing the content of the sound must be submitted; the descriptions of the sound mark and the sound sample must be consistent.
The way the sound mark is to be used for its designated goods or
services must also be stated in the description of the mark.
According to the Guidance, when a colour combination mark is
composed of the following elements, the following are considered to
lack distinctiveness:
- A sound that directly indicates the content, target consumers, quality, function, usage and other characteristics of the designated goods or services. For instance, "Piano Sound" is considered to distinctiveness when used on goods such as "Musical Instruments"; "children's laughter" lacks distinctiveness on goods such as "infant formula";
- A sound that can usually be heard in the process of the use of goods or the provision of services. For instance, the sound of "tapping" and "banging" that is usually made when opening a bottle lacks distinctiveness when used on goods such as "beer" and "wine";
- Music that is common to the industry or commonly used in the industry. For instance, the melody of "Wedding March" lacks distinctiveness when used on services such as "Wedding Planning and Arrangement Services".
- A sound that is too simple or too complex. For instance, using the entire melody of "To Alice" on services such as kindergartens is considered to lack distinctiveness as it is too complex.
- A word or phrase that is directly sung, read, spoken or otherwise called out in an ordinary tone or simple melody. For instance, speaking "Here you go" in the usual tone lacks distinctiveness.
Evidence must be provided to prove acquired distinctiveness by long-term and extensive use of the sound mark and the stable connection between the mark and its designated goods or services.
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.
