The applicants may face difficulties to register three-dimensional trademarks in China. According to the China National Intellectual Property Administration (CNIPA)’s guide for trademark examination and adjudication (2021), a three-dimensional trademark is registrable if it meets the formality requirements and passes the substantive examination under Article 10, 11, 12, 30 and 31of the China trademark law (2019). The test for a three-dimensional mark is the same or more than the test applied for a two-dimensional mark.
Formality examination
Where an application is filed for registration of a three-dimensional trademark, the applicant shall make a statement, submit a description on how the mark is used and drawings including at least three views to accurately reflect the shape of the three-dimensional trademark. During the formality examination, the CNIPA may issue office actions to require the applicant to provide a disclaimer of unregistrable elements (nondistinctive part) of the mark or provide amended drawings to clearlyshow the shape of the mark. After the application is preliminarily approved and published, the disclaimer stating the applicant does not claim exclusive rights to the unregistrable elements will be published underneath the drawing of the mark.
Substantive examination
Article 10 stipulates the signs that shall not be used as trademarks. The signs include those identical or similar to the state name, national flag, emblem or anthem of PRC, of foreign countries and international inter-governmental organizations (with exceptions), having the nature of discrimination against any nationality, being deceptive and misleading as to the quality or other characteristics of the goods and the place of origin of the goods, being detrimental to social morals or having other negative influence. For example, if a three-dimensional mark applied for registration on perfumes in class 3 has the shape of human skull (
), the application is considered having negative and harmful influence and shall be refused.
Article 11 stipulates the signs that shall not be registered as trademarks. The three-dimensional trademark shall be distinctive and capable of distinguishing the applicant’s goods from other traders’ goods. If the three-dimensional trademark is common shape of the goods or common container or packaging of the goods, the relevant public is unlikely to regard it as a trade mark. If the shape is used in a non-trade mark sense, it shall not be accepted for registration. Examples of these types of shape are as follows:
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Trademark information |
The CNIPA’s decisions or Court’s rulings |
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App. No. 8549907 Class: 28 Goods: Scale model vehicles Status: invalid |
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IR. No. 824367 Class: 5 Goods: Pharmaceutical products Status: invalid |
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App. No. 6318971 Class: 33 Goods: Alcoholic beverages, except beer Status: invalid |
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Reg. No. 15736970 Class: 14 Goods: Jewelry, precious stones, necklaces (jewelry), etc. Status: invalid
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In case the CNIPA refuses a three-dimensional mark for lack of distinctiveness, the applicant is entitled to file a review and submit evidence to prove the mark is capable of distinguishing the origin of goods in China. According to Article 11.2, where trademarks under the preceding paragraphs have acquired distinctiveness through use and become easily distinguishable, they may be registered as trademarks. It is not easy for the applicant to persuade the CNIPA or the courts that the three-dimensional mark can function as a trademark.Here are few examples of successful registration over the years.
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Trademark information |
The CNIPA’s decisions or Court’s rulings |
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IR. No. 1221382 Class: 3 Goods:Perfumes Status: valid The applicant: PARFUMS CHRISTIAN DIOR |
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Reg. No. 19119659 Class:3 Goods: Dry shampoos, hair conditioner, shampoos Status: valid The applicant: THE PROCTER & GAMBLE COMPANY |
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If the shape of the three-dimensional markdoes not show the shape of the goods or the shape of containers and packaging of the goods, it is less likely to be refused on the ground of lack of distinctiveness. For example, the shape “
” is registered as a three-dimensional mark on “beer, fruit juices, waters (beverages), etc.” in class 32. However, if the shape is simple, basic or decorative, it is not capable of distinguishing and lacks distinctiveness.
Article 12 stipulates an application for a three-dimensional mark shall not be registered if it consists only of the shape that results from the nature of the goods, the shape of goods that is necessary to achieve a particular technical result, or the shape which gives substantial value to the goods.For example, the shape of tyre or sewing needles applied for registration on the goods tyres or needles respectively shall be refused because the shape is essential to the use or purpose of the goods or to obtain a technical result of the goods. In short, the shape with overall functionality is unacceptable for trademark registration.
Article 30 and 31 aim to avoid the likelihood of confusion by conducting the analysis of similar marks to refuse later identical or similar applications on the same or similar goods/services. The three-dimensional marks may consist of shapes only, or shapes and other two-dimensional elements.The shapes or other elements may be inherently distinctive or nondistinctive. The CNIPA shall not only compare similarity of the shapes between three-dimensional marks, but alsocompare similarity of the shape or other elements of three-dimensional marks with two-dimensional marks. It is likely that a three-dimensional mark containing a common shape in the industry and distinctive words or logo may be refused by the CNIPA due to existence of prior similar word mark or device mark.
In conclusion, regarding the examination of the three-dimensional marks, there are a number of issues which must be looked at in line with the China Trademark Law. The first is the issue of distinctiveness. If the markreflects the common shape of the designated goods or the common shape of container and packaging of the goods in the trade, it is unlikely to be registrable. Sometimes an addition of distinctive word or device to the shape is not sufficient to overcome the refusal or defend the invalidation. Unusual shapes are more likely to be acceptable. In case of refusal, the applicant may respond to argue inherent distinctiveness of the mark and/or submit evidence to prove acquired distinctiveness of the mark is established through use. The second is the issue of functionality. A three-dimensional markwhich has functional features only is unregistrable. The third is the issue of likelihood of confusion. The CNIPA or the Courts will compare the similarity of elements between the marks in question.Last, a three-dimensional mark shall not violate the prohibitory provisions of the Trademark Law. To improve the chances of registration, please consult professionals before filing the application.
Abstract: The applicants may face difficulties to register three-dimensional trademarks in China. There are a number of issues which must be looked at in line with the China Trademark Law. The first is the issue of distinctiveness. The second is the issue of functionality. The third is the issue of likelihood of confusion. Last, a three-dimensional mark shall not violate the prohibitory provisions of the Trademark Law.
[i]北京市高级人民法院（2015）高行（知）终字第799号 Beijing High People’s Court (2015) Gao Xing (Zhi) Zhong Zi 799
[ii]北京市高级人民法院（2016）京行终34号 Beijing High People’s Court (2016) Jing Xing Zhong 34
[iii]北京市高级人民法院（2014）高行终字第882号 Beijing High People’s Court (2014) Gao Xing Zhong Zi 882
[iv]北京市高级人民法院（2020）京行终4528号 Beijing High People’s Court (2020) Jing Xing Zhong 4528
[v]最高人民法院（2018）最高法行再26号 The Supreme People’s Court (2018) Zui Gao Fa Xing Zai 36
[vi]商评字[2017]第0000152948号TRAB’s decision (2017) 0000152948
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