Right before your Christmas vacation we are out with the last issue of GossIP, disclosing some IP, Tech and Food law cases.
Registering a 3D trademark is always a bit tricky, and maintain it is even more difficult. We disclose here the case of
Still on IP topic, we discuss the major changes in the Patent Law that has been announced to go into force in
News regard, between others, the protection period for patents, partial design protection, pharmaceutical patents, compensations and damages, and of course good faith, which is a helpful step in the battle against copied patents.
A break with an amazing news regarding
We close this November-December GossIP issue with an analysis of the measures taken by the
Why
By
3D Trademark for "four-leaf clover" registered in
On
Disputes on 3D trademark distinctiveness
On
The CNIPA (prior the TRAB) deems the mentioned 3D trademark is not easy to be recognized as a trademark by the public and cannot play the role of distinguishing products. Furthermore, the evidence provided by
- Even if the "four-leaf clover" is an original design, the inherent distinctives will not be affected by its originality. In actual use, the pattern is easily regarded as the shape of products by consumers, and it is difficult to distinguish the source of product.
-
Even if the four-leaf clover products have been widely promoted and sold by
Van Cleef & Arpels in the Chinese market, they cannot prove the use of such pattern is Trademark Use.
In the nature of lacking inherent distinctiveness, the acquired distinctiveness of the pattern in the products jewelry, necklace ( jewelry), etc. cannot be proved sufficiently.
Therefore, Beijing IP Court rejected the request of
How to review 3D Trademark distinctiveness
Then, how to create and demonstrate 3D Trademarks of distinctiveness?
The answer lies in two aspects: 1) making sure that the trademark pattern itself is distinctive in nature; 2) If not, collecting sufficient evidence to prove its acquired distinctiveness.
It is not easy for applicants to meet the requirements of trademark distinctiveness when designing the 3D trademark. To make it clear to understand, we can look it from the perspective of ordinary consumers.
When we see a certain package or 3D character, we can instantly associate to its provider without carefully identifying the word, graphics and other "trademark elements".
In this regard, the previous package or 3D character assumes the role of distinguishing the source of product, and thus has the distinctiveness in the sense of a trademark.
In the example below, the 3D trademark on the left is rejected, while the one on the right is registered.
Furthermore, to avoid overlap with Design rights, the examination on the distinctiveness of 3D Trademarks tends to be stricter than 2D trademarks. It does not only require the pattern to be distinctive in nature, but also requires the relative public to take the pattern as a sign indicating source of products.
If the relative public takes the pattern merely as (part of) the shape of the products rather than a trademark, the pattern cannot play the role of distinguishing products and thus will not be deemed as Trademark Use.
Such point has been stipulated in Article 9 of Provisions of the
Article 9
Where an application for registration as a trademark is made regarding a three-dimensional sign originating from the shape or part of the shape of the products itself, as it is hard for the relevant public to recognize the trademark as a sign indicating the source of the products in general circumstances, such sign generally possesses no conspicuous feature as a trademark.
The sole creation or the earliest use of such shape by the applicant cannot be definitely identified as the existence of conspicuous features as a trademark.
However, lacking distinctiveness in nature does not mean absolute impossibility in obtaining a registered 3D Trademark.
If the Applicant has sufficient evidence to prove its acquired distinctiveness through use, it can be registered later.
For example, the superstar in chocolate world,
S.p.A. after rejection appeal.
3D Trademark Specimen of
Conclusion
From the legal perspective, perhaps
Anyway,
In addition, from the consumer perspective, I believe, for many jewelry lovers, the classic four-leaf clover design is still the instantly recognizable symbol of
As said by
The invalidation against No. 15736970 is still pending in the second instance. Hoping the four-leaf will bring the luck to the brand this time as usual.
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