Three-dimensional trade marks – registration and protection

Rouse
Sophia Hou
[email protected]

It is now eight years since China's trade mark law was amended to provide for the registration of 3-D marks. The law was amended in December 2001, and since then thousands of 3-D trade marks have been registered. But on what basis have they been registered? Does a 3-D trade mark enjoy the same protection as a traditional mark?

What is a 3-D trade mark?

A 3-D trade mark is a three-dimensional sign, or a combination of three-dimensional signs, colours, words and devices. It may be the shape of a product, or its container or packaging, or it may be a cartoon character, figurine or statue.

Not all three-dimensional signs will, however, be registrable. Three-dimensional signs will not be registrable if they:

n result merely from the nature of the goods themselves; for example, the shape of a buckle is not registrable in relation to buckles;

n are necessary to obtain a technical result; for example, if the shape of a switchboard is determined by its function it will not be registrable; or

n add substantial value to the goods. For example, the shape of a unique knife handle design will not be registrable if the handles add substantial value to the knife.

In addition, a 3-D sign must be distinctive from the common shape of the goods, or packaging of the goods, in respect to which registration is sought. Otherwise the 3-D sign will not be capable of distinguishing the goods of the trade mark owner from the goods of others.

Why register a 3-D mark?

A unique shape will help attract the attention of consumers. It will also help them differentiate your goods from the goods of others. You may, therefore, wish to take some measures to ensure that you have exclusive rights in the shape of your product or product packaging.

There are various forms of protection for shapes: copyright, design patent and 3-D trade mark registration.

The rights secured by trade mark registration are particularly strong. Unlike copyright and design patents, registered trade marks can be renewed indefinitely.

How are 3-D marks registered and protected?

In practice, the Chinese Trade Mark Office grants registrations to 3-D signs if:

n the shape has acquired distinctiveness through widespread use, such as with the Coca-Cola bottle;

n the shape is considered as a whole, i.e. together with a distinctive device, words and/or colours, the shape is deemed to be sufficiently distinctive. The 'Heineken Beer Can' below is an example of this.

A large proportion of the 3-D trade marks that have been granted in China fall into the latter category. The trade mark owner will be able to action if both elements, i.e. the shape and the traditional marks, are used.

The scope of the protection available to 3-D marks is generally not as great as that available to traditional marks.

Because a large proportion of registered 3-D trade marks lack distinctiveness in terms of the shape alone, the owners' exclusive rights in the shape itself will be limited. Also, enforcement can be more difficult. Compared with traditional marks, there are relatively few 3-D marks and law enforcement authorities at all levels lack experience and expertise in dealing with them.

Recommendations

Where the shape element of a mark is not, in itself, distinctive, the trade mark owner should endeavour to make the relevant public aware of his rights in the shape. This is likely to reduce the likelihood of infringement. Then, once the link between the particular 3-D shape and the owner of the 3-D trade mark registration has been established, distinctiveness will have been acquired and it will be possible to enforce the trade mark registration.