On 26 April 2018, the 18th World Intellectual Property Day, the Supreme People's Court (SPC) held a public hearing on the retrial of the administrative litigation concerning the refusal of Parfums Christian Dior's international 3D trademark application.
The trademark (Figure 1) in question was for a bottle in the shape of a teardrop with a small globe on top and an oval-shaped lower end, which was decorated with circles of gold thread along the narrow neck. Christian Dior used the mark for its perfume J'adore.
Figure 1
Christian Dior registered the 3D mark in France on 8 August 2014. On 6 November 2014 it filed an application for an international registration (with territorial extension to China) for the mark with regard to the following goods in Class 3:
perfumery, perfumes, eau de parfum, eau de toilette, eau-de-cologne, perfume extracts, scented body milks, scented oils and lotions for the body, shower perfumed lotions, perfumed shower gels, bath lotions, scented gels for the bath, scented soaps, scented shampoos; make-up for the face, eyes and lips; nail and nail care products.
On 13 July 2015 the China Trademark Office (CTMO) refused the trademark on the grounds that "the mark is devoid of distinctiveness".
On 30 August 2015 Christian Dior filed an application for review with the Trademark Review and Adjudication Board (TRAB). On 22 February 2016 the TRAB confirmed the refusal on the grounds that the trademark lacked distinctiveness, as provided for by Article 11.1(3) of the Trademark Law ("[signs] that otherwise lack distinctiveness… shall not be registered as trademarks").
Christian Dior filed an appeal with the Beijing IP Court on the following grounds, among others:
- It had submitted a three-view drawing during the refusal review procedure, which the TRAB had failed to consider.
- The mark was distinctive and not a usual container for the designated goods.
- The mark contained the distinctive word part 'J'adore' (as shown in the three-view drawing), which enabled it to serve as a source identifier without causing misidentification or confusion among the relevant public.
- Through long-term and extensive promotion, the mark has acquired strong distinctiveness.
On 29 September 2016 the Beijing IP Court issued a judgment upholding the TRAB's decision. Christian Dior appealed to the Beijing High People's Court, which ruled in the TRAB's favour on 23 May 2017.
Christian Dior filed for a retrial with the Supreme People's Court, which heard the case on 29 December 2017. On 26 April 2018 Tao Kaiyuan, SPC vice president and presiding judge of the retrial case, announced the retrial ruling, overturning the decisions of the lower courts and the TRAB and ordering the TRAB to re-examine the case.
The case was far from simple and raised several procedural issues.
Definition and publication of application's subject matter The case concerned the differences between the Madrid System procedure and the Chinese procedure regarding 3D trademark applications. In China, pursuant to Article 13 of the Implementing Rules of the Trademark Law, a domestic 3D trademark application must be accompanied by a three-view drawing. In the case of an international extension from the World Intellectual Property Organisation, Article 43 of the rules states that if a 3D trademark – as internationally registered – has only one view, the applicant must provide the CTMO with a three-view drawing within three months from its international registration in Geneva.
In light of the above, the international filing in the case at hand was incomplete at the CTMO level. During the review procedure, Christian Dior provided the TRAB with a three-view drawing and claimed, among other things, that this drawing revealed the presence of the word 'J'adore', which it claimed was sufficient to rebut the refusal based on lack of distinctiveness.
The SPC considered that the CTMO, on observing that the 3D trademark had only one view, should have invited the applicant to complete the application with a three-view drawing. Such procedure is provided for in Article 40.2 of the Implementing Rules of the Trademark Law, under which the CTMO must give Chinese applicants the opportunity to rectify or complete their international applications. The SPC referred to this article and ruled that the CTMO and the TRAB should have applied it in favour of a foreign applicant, even though Article 43, which concerns foreign applicants, provides no such obligation.
However, the SPC failed to consider one issue.
In China, international trademark applications are published only once. Thus, it is impossible for an applicant to publish their mark and subsequently complete the application by later providing a three-view drawing. If a completed trademark is approved, there would be a discrepancy between the published international 3D trademark (one view, which is seen by the public) and the unpublished (if approved) trademark (three views, which are not seen by the public).
There is a major loophole in the CTMO's practice that no separate publication be made for international registered trademarks, at least when additional information on the trademark is provided, which creates problems. The public are denied access to supplementary three-view drawings and applicant statements and are thus deprived of the opportunity to file an opposition. It would be advisable for a remedial mechanism to be created to eliminate this blind spot.
Consistency of examination criteria As regards the distinctiveness (or acquired distinctiveness) of the 3D mark in question, the SPC based its decision to return the case to the TRAB on Christian Dior's argument regarding the consistency of examination criteria.
Christian Dior argued that it had obtained the registration of another trademark (7505828) (Figure 2), which shows two views of the tear-shaped bottle, one of which contains the word 'J'adore'.
Figure 2
Since it was not disputed that the international trademark contained the word 'J'adore', as did the first domestically registered Trademark 7505828, the SPC considered that the TRAB, when examining the case, should have been consistent with the first approval concerning the domestic trademark.
One of Christian Dior's main arguments in the TRAB and court proceedings was that the mark also contained the word 'J'adore' (although the word cannot be seen in the international registration).
The TRAB generally follows its Trademark Examination and Adjudication Criteria, which set out three scenarios for combinations of a 3D sign and other graphic (2D) elements:
- A 3D mark that is a combination of a distinctive 3D shape and other distinctive graphic elements is distinctive.
- A 3D mark that is a combination of a distinctive 3D shape and other non-distinctive graphic elements is distinctive.
- A 3D mark that is a combination of a non-distinctive 3D shape and other distinctive graphic elements is distinctive. However, the protection scope of this registered trademark should be confined to the distinctive graphic part, which will be noted in the Trademark Gazette and the trademark registration certificate.
The TRAB thus adopts a global appraisal on the distinctiveness of combinations of 3D shapes and other graphic elements.
What if a mark is solely 3D? If the subject matter had been a 3D bottle only (without the word), the TRAB would have had to re-examine the trademark and assess its distinctiveness (inherent or acquired), as well as whether it could be considered functional (pursuant to Article 12 of the Trademark Law).
In this regard, the SPC provided no specific parameters on assessing the distinctiveness of the tear-shaped bottle depicted in the application.
In principle, the SPC does not rule out the inherent distinctiveness of a 3D mark that is merely the shape of goods (Article 9 of the Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights). However, the interpretation does make such registration particularly easy:
Where an application is filed to register the shape or partial shape of a product as a three-dimensional trademark, if under most circumstances, the relevant public is not likely to take such sign as a source identifier of the goods to which it is attached, such sign should be found non-distinctive as a trademark.
The fact that a three-dimensional sign has been originally created by or firstly used by the applicant shall not necessarily be admitted as proof of distinctiveness of such sign.
Whereas an inherently non-distinctive sign as mentioned in the first paragraph has become, through long-term or extensive use, source identifier of the goods to which it is attached by the relevant public, the Court may recognised such sign as distinctive.
The Trademark Examination and Adjudication Criteria illustrates with examples that the following are devoid of distinctiveness:
- basic geometrical 3D shapes;
- simple and ordinary 3D shapes;
- decorative 3D shapes; and
- generic packaging shapes or packaging shapes which are commonly used in the relevant industry.
However, a 3D shape that is not a generic packaging shape or commonly used for the designated goods could be registrable.
It will be interesting to see how the TRAB will address the following questions in its re-examination:
- Is the Christian Dior 3D mark inherently distinctive?
- What are the parameters of commonly used packaging?
In reality, a 3D mark that is a product's packaging is usually used in combination with graphic signs, such as Christian Dior's teardrop bottle, which includes the word 'J'adore'. The following questions may be up for debate:
- How should a 3D shape's distinctiveness be determined?
- Will the 3D shape fail to function as a source identifier without the word part?
- Should all of the use evidence concerning the word part of the trademark be excluded when assessing the 3D shape's acquired distinctiveness?
- Could the 3D shape acquire distinctiveness through its combined use with a word part, and how should this be proved?
The 2014 SPC judgment concerning the distinctiveness of Nestlé's Maggi sauce bottle provides a precedent for this case. In that case, the bottle's shape was first registered by the CTMO as a solely 3D trademark, but the registration was eventually cancelled. Nestlé had to prove that it had used the bottle alone or at least that the shape of the bottle had become a source identifier, regardless of the mark written thereon.
For further information on this topic please contact Paul Ranjard, Hui Huang or Yunquan Li at Wanhuida Peksung by telephone (+86 10 6892 1000) or email ([email protected], [email protected] or [email protected]). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
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