There is a wide array of identifying signs for goods and services beyond conventional words or logos. In recent years, businesses have sought broader protection for signs that are traditionally not registrable as trademarks, but are nonetheless linked to their products. According to the International Trademark Association, non-traditional marks may include product designs or configurations, colours, scents, sounds, tastes, touch, motion and even moving images.
With many jurisdictions revising their trademark regimes by allowing for the registration of non-traditional marks, China has heard the call for change and recently announced that it will broaden its scope of registrable trademarks through amendments to the Trademark Law, which will be enacted in 2014. However, this is not an entirely new step. In 2001 China revised its Trademark Law to allow for certain non-traditional marks and, beyond trademark laws, it has also incorporated other means of protection for such marks. Therefore, while the registration of non-traditional trademarks is somewhat limited in China in comparison to some jurisdictions, the upcoming reforms mean that trademark owners (or would-be owners) will no longer be restricted to traditional marks (ie, words and logos) and can expect to see continued and positive changes in the Chinese trademarks arena.
Scope of trademark registration
The 2001 Trademark Law states that "any visible sign that can serve to distinguish the goods of a natural person, legal person, or other organization from those of another, including any work, design, letter of the alphabet, numeral, three-dimensional symbol and colour combination, or any combination of the above, may be made a trademark for application for registration" (Article 8). The law allows for certain non-traditional marks to be registered. However, on August 30 2013 China officially passed revisions to this law, which will be enacted on May 1 2014. Included in these eagerly anticipated changes is further expansion to the scope of registrable trademarks. The revised Article 8 now states that "any sign that can serve to distinguish the goods of a natural person, legal person, or other organization from those of another, including any work, design, letter of the alphabet, numeral, three-dimensional symbol, colour combination, sound, or any combination of the above, may be made a trademark for application for registration". Thus, registration will no longer be limited to visible signs, as sound marks have become available. These developments have been welcomed by both domestic and foreign entities operating in China.
A non-traditional mark that is allowed in China under both the 2001 Trademark Law and the amendments thereto is the three-dimensional trademark. Although permitted, trademark owners should bear in mind that the registration of three-dimensional marks is still subject to some limitations. According to Article 11 of the Trademark Law, a mark cannot be registered if it merely "indicates the quality, principal raw materials, function, use, weight, quantity or other features of the goods", and where "distinctive characteristics are lacking". However, such a mark may be registered if it has "acquired distinctive features through use and is readily distinguishable". Article 12 goes on to discuss the limitations of three-dimensional marks, stating that "no application for registration of a three-dimensional sign as a trademark may be granted, where the sign merely indicates the shape inherent in the nature of the goods concerned, or it is only dictated by the need to achieve technical effects or the need to give the goods substantive value". As such, three-dimensional trademarks are not easily granted in China, and distinctiveness must be made clear in order to assure registration. However, while not easily obtained, several three-dimensional marks have been granted in China, including the Coca-Cola bottle, the Zippo lighter, Kraft's Toblerone chocolate bar (the packaging and the shape of the chocolate bar itself), Rolls Royce's 'Spirit of Ecstasy' hood ornament and Pfizer's blue diamond Viagra pill.
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.