Latest news about “non-traditional trademarks” in China

Trademarks are used to distinguish the goods and services from different trademark owners. Trademarks are unique names, symbols, or logos which have distinctive characteristics.

Trademarks are categorized into product marks, service marks, certification marks and collective marks. And the elements that can combine a trademark include (Chinese) characters, figures, letters of the alphabet, sound, colour combinations, 3-dimensional symbol and their combinations according to the Article 8 of China Trademark Law. A trademark seeking registration shall be so distinctive as to be distinguishable and shall not infringe upon the prior legitimate rights of others.

Some non-traditional trademarks like 3D hologram, touch mark, scent mark, motion mark, single coloured mark, trade dress mark, which are accepted in USA and Europe, are not eligible for application for registration as a trademark in China yet.

But the case law relating to non-traditional trademarks seems to be changing step by step now as recent developments show.

Recently the Beijing High Court decided the administrative litigation (2nd instance) concerning the TRAB review of refusal “Red Sole Trademark” on December 24, 2018. The Red Sole Trademark was designed in 1990s by Christian Louboutin, a famous French designer of high-heeled shoes, and has be-come a well-known fashion brand around the world.

The Red Sole Trademark case is related to the position trademark which is not clearly defined in the China Trademark Law. We can see from the Red Sole Trademark case that the Court is now open in the interpretation of Article 8 of China Trademark Law over the elements that could be used as a trademark.

Christian Louboutin filed with WIPO the international registration for the mark on April 15, 2010, covering the goods, “ladies’ footwear,” in Class 25. The extension of the mark in China was reject-ed by the CTMO on the ground that “the mark is devoid of any distinctive character in respect of the designated goods.” The applicant filed the TRAB review of refusal before the TRAB but the TRAB affirmed the CTMO’s rejection based on Article 11.1.3, reasoning that the mark, which is comprised of a common high-heeled shoe shape and the single red colour applied to the shoe sole, lacks distinctiveness and the relevant consumers may not treat it as a trademark to distinguish the source of goods.

During the administrative litigation, the Beijing IP Court overruled the TRAB decision. The Beijing IP Court held it wrong that the TRAB identified the mark as a device mark. Instead, the mark should be considered as a 3D mark, with the dotted line framing the shape of the goods of high-heeled shoes and with the red colour applied to the sole of the shoe.

Both the applicant and the TRAB were dissatisfied with the decision of the Beijing IP Court and appealed to the Beijing High Court. After examination, the Beijing High Court affirmed the fact that the mark was filed through the Madrid System before WIPO and designated China on April 15, 2010. According to Article 44 of the Regulations for Implementation of the China Trademark Law, the object to be examined should be based on the published information of the WIPO.

Thus, the mark is comprised of the red colour in the designated position and is a mark of single colour with restriction over the position of the colour on the goods. Both the TRAB and the Beijing IP Court were wrong in the identification of the nature of the mark and its composed elements and maintained the decision of the Beijing IP Court.

The statement over the registrability of a single-color trademark with restriction over the position of the colour on the goods deserves attention. According to Article 8 of China Trademark Law, any sign that distinguishes the goods of a natural person, legal person, or other organizations from those of others, including any word, device, letter, number, three-dimensional sign, colour combination, sound and combination thereof, may be registered as a trademark. Though the mark does not belong to the situations explicitly described under Article 8 of China Trademark Law, it is not explicitly eliminated from the situations where a sign can be registered as a trademark, either.


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