Non-traditional Marks - China IPIC Presentation Title Non-traditional Marks - China What the future holds for non-traditional marks in China

How many non-traditional marks were approved? At the end of 2011, the China Trademark Office had received over 9.71 million trademark registration applications, 6.65 million approved trademark applications. How many non-traditional marks were approved?

Non-traditional Trademark Matrix People's Republic of China Sound Marks Taste Marks Touch Marks Smell Marks Holograms Motion 3D Marks Single Colors Color Combinations Trade Dress

Trademark Law of the People's Republic of China Article 8: 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 color combination, or any combination of the above, may be made a trademark for application for registration.

Non-traditional Trademark Matrix People's Republic of China Sound Marks Taste Marks Touch Marks Smell Marks Holograms Motion 3D Marks Single Colors Color Combinations Trade Dress X

Visible Non-traditional Marks Holograms Motion Marks 3D Marks Single Colors Color Combinations Trade Dress

Visible Non-traditional Marks Visible non-traditional marks are often refused by the China Trademark Office (CTMO) on the basis that these non-traditional marks lack inherent distinctiveness - - refused pursuant to Article 11 of the Trademark Law. However, they are registrable if an applicant is able to evidence that these type of marks have acquired distinctiveness through use.

Holograms, Motion Marks and Single Color Holograms, Motion Marks, and Single Color marks are all visible signs. To date no trademark registrations for these types of marks. In addition to lacking inherent distinctiveness, the CTMO and TRAB sometimes interpret Article 8 of the Trademark Law as listing all the types of registrable trademarks.

Trademark Law of the People's Republic of China Article 8: 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 color combination, or any combination of the above, may be made a trademark for application for registration. No mention of holograms, single colors, or motion marks.

Visible Non-traditional Marks Not Listed Under Article 8 of the Trademark Law Holograms Motion Marks 3D Marks Single Colors Color Combinations Trade Dress Holograms Motion Marks Single Colors Trade Dress

Trade Dress What about trade dress? No mention of trade dress under Article 8 of the Trademark Law, however the Guidelines for Trademark Examination – used by the CTMO - provides that three dimensional trademarks, which are registrable, can be “the packaging of the product”. Accordingly, no registrations for trade dress per se, however trademark protection for trade dress available as three dimensional marks. Example: Ferrero Rocher Chocolate Wrapping TM Reg. No. GI783985

Holograms, Motion Marks and Single Color Could holograms, motion marks, and single colors also be registrable as trademarks? Single color marks may be difficult – Article 8 of the Trademark Law mentions color combinations but does not mention color marks - may be interpreted as the expressed intention of the State Council that single color marks should not be registrable as marks.

Trademark Law of the People's Republic of China Article 8: 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 color combination, or any combination of the above, may be made a trademark for application for registration.

Holograms and Motion Marks Even if the types of registrable trademarks as listed under Article 8 of the Trademark law are exhaustive, holograms and motion marks may possibly be registrable as trademarks under “works” or “combination of designs”. Alternatively Article 8 of the Trademark Law could be interpreted as only listing several examples of registrable trademarks, and the listed types of marks are not exhaustive.

Non-traditional Trademark Matrix People's Republic of China Sound Marks Taste Marks Touch Marks Smell Marks Holograms Motion 3D Marks Single Colors Color Combinations Trade Dress X ? ®

Remaining Forms of Visible Non-traditional Marks 3D Marks Color Combination Marks

Non-traditional Trademark Matrix People's Republic of China Sound Marks Taste Marks Touch Marks Smell Marks Holograms Motion 3D Marks Single Colors Color Combinations Trade Dress X ? ®

Color Combinations Combination of at least two colors can be registered as a trademark. However, the initial presumption at the CTMO is that color combination marks lack inherent distinctiveness. The general view at the CTMO is that overwhelming evidence is needed to support that a color combination mark has acquired distinctiveness and is therefore entitled to registration.

Color Combinations Acquiring Distinctiveness How long has the color combination been used as a trademark in China; How is the color combination used as a trademark; Sales of products associated with the color combination mark; and Advertisements of products associated with the color combination mark. These factors may be considered when determining whether a color combination mark has acquired (sufficient) distinctiveness for registration.

Color Combinations Swedish Kapman AB submitted an application for the registration of a color combination trademark for Class 8 with respect to “saw blade (parts for manual tools)”. Gillette Company submitted an application for the registration of a color combination trademark for Class 9 with respect to “batteries”. Refused Accepted

3D Marks Under original Trademark Law 3D marks not recognized. 2nd amendment to trademark law expanded definition of a trademark to include 3D marks. Three-dimensional trademarks can be the shape of the product itself, the packaging of the product or other three–dimensional signs. (Guidelines for Trademark Examination – CTMO ) Initial assumption on examination of 3D marks at the CTMO is that they lack inherent distinctiveness – refused pursuant to Article 11 of the Trademark Law.

3D Marks Acquiring Distinctiveness How long has the 3D symbol been used as a trademark in China; How is the 3D symbol actually used as a trademark; Production levels of products associated with the 3D mark ; Sales of products associated with the 3D mark; and Advertisements of products associated with the 3D mark . These factors may be considered when determining whether a 3D mark has acquired (sufficient) distinctiveness for registration.

3D Marks – Absolute Refusal Grounds Article 12 of the Trademark Law - No application for registration of a three-dimensional sign as a trademark may be granted, (1) where the sign merely indicates the shape inherent in the nature of the goods concerned, or (2) it is only dictated by the need to achieve technical effects or (3) the need to give the goods substantive value.

Pure 3D Marks – Lacking other Distinctive Features Camus - Prestige Jubilée Cognac Zippo - Lighter Pfizer - Viagra

Combination - 3D Marks Majority of registered 3D marks are combination 3D marks – e.g. 3D object with label. The scope of protection for combination marks is mostly attributable to the distinctive combination element (e.g. label).

Current Non-traditional Trademark Matrix People's Republic of China Sound Marks Taste Marks Touch Marks Smell Marks Holograms Motion 3D Marks Single Colors Color Combinations Trade Dress X ? ®

Proposed Amendment to China’s Trademark Law Article 8 (Amended): In respect of any sign capable of distinguishing the goods or service of one natural person, legal entity or any other organization from that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbol, colors and sounds, and their combination, an application may be filed for registration.

The Future of Non-traditional Trademark for the People's Republic of China - Matrix Sound Marks Taste Marks Touch Marks Smell Marks Holograms Motion 3D Marks Single Colors Color Combinations Trade Dress ® X ?