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Position Trademarks Refused by the Chinese Court for Registration
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| International trademark No. 798099 | International trademark No. 798096 |
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Through hearing, the court holds the following view:
The three-dimensional international trademarks No. 798099 "Birkin
Bag" and No. 798096 "Kelly Bag" are designated for bags. They mainly
consist of the bag body, the flip on the body and the handle. In the
three-dimensional reproductions, the dotted line represents the body
outline and the handle while the solid line stands for the flip on
the body. In hearing, HERMES ITALIE S.P.A. asked for protection on
the flip featured with the dotted line as it is distinctive. But there
is no provision in the Trademark Law and the Implementing Regulations
of the Trademark Law on protection of a part of a three-dimensional
trademark, thus the overall appearance of the trademarks shall be
taken into consideration. In this case, the flip part in the two three-dimensional
trademarks is distinctive in designing to some extent, but the designing
demonstrates the functional features of the designated goods. On the
whole, the two three-dimensional trademarks are devoid of the necessary
distinctiveness and insufficient to enable the relevant public to
distinguish the source of goods. In addition, the plaintiff fails
to provide sufficient evidence to certify the distinctiveness acquired
by the trademarks through long-term use in China. To sum up, Beijing
No.1 Intermediate People's Court upholds the decision made by the
TRAB on refusal of the two trademarks.
Comments
and analysis:
According to the definition made by the "Standing Committee on the
Law of Trademarks, Industrial Designs and Geographical Indications"
of WIPO, a position trademark shall be deemed as one of non-traditional
trademarks. The application for registration of such trademarks shall
contain a reproduction, which shall be clear and explicit enough to
enable the examiner of the Trademark Office to verify the object to
be protected. In such applications, the part that needs no protection
shall be marked with the dotted line. If necessary, the position where
the trademark is applied shall be illustrated. Now, position trademarks
can be registered as a type of individual trademarks to receive protection
in some European countries, such as Germany and France. The two internationally
registered trademarks applied for by HERMES ITALIE S.P.A. are undoubtedly
typical position trademarks. So far in China, a position trademark
is not an individual type of trademarks to be protected. But as in
many countries, position trademarks can still receive protection in
China as planar figurative trademarks or three-dimensional marks.
It can not be denied that the flip represented by the solid line
in the three-dimensional trademarks mentioned above are indeed the
major components or the focus in designing. But, trademark designing
and consumers' visual impression are all based on the overall appearance
of the trademarks. As pointed out by the judge in the decision, there
is no provision in the Trademark Law on protection of a part of a
three-dimensional trademark. The overall appearance of the trademarks
shall be taken into consideration. As a matter of fact, the main part,
such as the flip, in the trademark applied for manifested as a handbag,
can receive protection as a three-dimensional trademark. (For example,
the applicant's internationally registered three-dimensional trademark
No. 806207 "
"
has already been registered in respect of goods in Class 18 in China.)
In application for registration of the overall designing of the handbag
as a three dimensional trademark, the stress shall be laid on the
visual effects obtained through overall observation and comprehensive
judgment rather than the partial designing. Otherwise, the application
does not correspond with the scope of goods as shown by the reproduction
of the trademark applied for.
It is very interesting that the judge pointed out in the decision
that "the flip part in the two three-dimensional trademarks is distinctive
in designing to some extent and the designing demonstrates the functional
features of the designated goods". But the judge did not go further
to explain what these functional features are or whether they are
technical or esthetical functional features. Therefore, no further
analysis was made on the relations between the functional features
and the distinctiveness of the trademarks.
It should be noted that the plaintiff has lodged an appeal with Beijing
Superior People's Court. Further comments on the functional features
in the court's final decision are expected.
(The End)