Beijing No.1 Intermediate People's Court recently approved registration of two three-dimensional trademarks filed by different foreign corporations by canceling the decisions made by the TRAB in its judicial proceedings. It is the first time for the Chinese court to make the positive decision on the registrability of three-dimensional trademark during judicial proceedings after the revision of the Trademark Law in 2002 to put three-dimensional trademarks under protection.


No. 1 case
FERRERO S.P.A. is the proprietor of international figurative trademark No. 783985 (three-dimensional trademark), which was filed for registration on May 23, 2002 in respect of goods including chocolate in Class 30.

The mark consists in the three-dimensional representation of a praline wrapped in gold colored paper with, it its upper part, a small oval imprint with a white background, gold edge and fine red border, set in a brown and gold base; all in gold, brown, white and red. It is transparent that the claimed object for trademark protection is the packaging of the designated products.The trademark was applied for territorial extension to China under Madrid convention. In March of 2003, the Chinese Trademark Office (CTMO) refused the application of the trademark for territorial extension to China due to devoid of distinctiveness. Then FERRERO S.P.A. filed an application for review with the Trademark Review and Adjudication Board (TRAB). In October of 2006, the TRAB made a decision to refuse it again on the grounds that the trademark, which was a three-dimensional trademark with common packaging on designated goods, is incapable of distinguishing the origin of goods. Dissatisfied with the decision made by the TRAB, FERRERO S.P.A. instituted administrative proceedings with Beijing No. l Intermediate People's Court, requesting for cancellation of the decision made by the TRAB, approval of the registration of the trademark applied for and support to the trademark applied for territorial extension to China.

In November of 2007, Beijing No. l Intermediate People's Court made the following comments through hearing:

1) The mark consists of a three-dimensional representation of a praline wrapped in gold colored paper with gold edge and fine red border, set in a brown and gold base.

2) The trademark applied for uses colors and selected packaging for goods which are not in the range of common packaging for designated goods.

3) The distinctiveness of the trademark applied for has become a symbolic design of the plaintiff's products, which enables consumers to identify the origin of goods using the trademark at the first glance.

4) The trademark applied for is distinctive enough and shall be approved for registration in China.

Accordingly, Beijing No. l Intermediate People's Court cancelled the decision of review made by the TRAB on refusal of international figurative trademark No. 783985 (three-dimensional trademark). Thereby, the trademark of FERRERO S.P.A. is the first three-dimensional trademark on packaging of product, approved for registration in China through judicial proceedings.


No. 2 Case
In December of 2001, ZIPPO MANUFACTURING COMPANY filed an application for registration of No. 3031816 figurative trademark (three-dimensional trademark) in respect of "cigarette lighters" in Class 34 with the CTMO. It is transparent that the claimed object for trademark protection is the shape of designated products per se.In August of 2002, the Trademark Office refused the application of Zippo's three-dimensional trademark. Dissatisfied with the decision, ZIPPO MANUFACTURING COMPANY filed an application for review with the TRAB in December of 2002. The TRAB thought that Zippo's three-dimensional trademark is devoid of any distinctiveness for it merely has a common design. In accordance with Article 11, Paragraph 1 (1) of the Chinese Trademark Law, the TRAB made its decision on refusal of the registration of Zippo's three-dimensional trademark in June of 2007. Dissatisfied with the decision, ZIPPO MANUFACTURING COMPANY instituted legal proceedings with Beijing No. l Intermediate People's Court.

Through hearing, Beijing No. l Intermediate People's Court thinks the three-dimensional trademark for cigarette lighters has the following elements:

1) A flat rectangular shape on the whole;

2) Flat surfaces;

3) Roundish corners;

4) A slight arch on the top;

5) Straight bottom surface;

6) Divided into the upper and lower part in the ratio of 5 to 7;

7) On the right side of the cuboid, there is a structure of an axle with a semicircular cross-section with a shorter parallel seam line between the upper and the lower parts.

The court further points out that in the appealed decision, the TRAB failed to clarify facts by neglecting elements 6 and 7 when confirming elements 1 to 5 mentioned above. Zippo's three-dimensional trademark, designed in a form of a cuboid on the whole, contains several specific elements. The simple and independent placement of the seventh element on the right side of the cuboid without any smooth transition is obviously different from the overall style of smooth transition on the major part of the trademark. Zippo's three-dimensional trademark was designed in an overall distinctive manner, different from commons styles in the sector. The overall distinctiveness of Zippo's three-dimensional trademark has become a symbolic design for Zippo's cigarette lighters and is capable of identifying the origin and then, the trademark applied for is distinctive and shall be approved for registration in China.

In April of 2008, Beijing No. l Intermediate People's Court ruled that the TRAB's decision of review should be cancelled on the ground that Zippo's three-dimensional trademark did not fall into the situation of refusal as specified in Article 11, Paragraph 1 (1) of the Trademark Law. The decision went into effect, as the TRAB did not file an appeal within the time limit specified. Thereby, the trademark of ZIPPO MANUFACTURING COMPANY is the first three-dimensional trademark on the shape of product per se, approved for registration in China through judicial proceedings.


Opinion and Analysis:
For FERRERO S.P.A. and ZIPPO MANUFACTURING COMPANY, the judicial approval for registration of the above mentioned three-dimensional trademarks is the most important progress in the field of IP protection, since both of them have been confronted with infringement in the Chinese market.

For instance, on May 16, 2006, ZIPPO MANUFACTURING COMPANY and Zippo mark Co. Ltd. filed a complaint with United States International Trade Commission (ITC), based on their effective U.S. shape trademark "Zippo's lighter", against four Chinese cigarette lighter manufacturers, including Hengxing Smoker's Ware Corporation, and some American importation dealers for their infringement upon the design of Zippo cigarette lighters and requested for intellectual property infringement inquiry into importation, transition and distribution of disputed cigarette lighters, or so-called "337 Investigation" and a permanent injunction on importation of such cigarette lighters into the U.S. by ITC.

Now, the successful registration of the three dimensional trademark "Zippo's lighter" in China causes the owner, namely ZIPPO MANUFACTURING COMPANY has acquired the exclusive right on this specific shape of product based on Chinese Trademark Law. Therefore, it means that ZIPPO MANUFACTURING COMPANY to extend their battlefront against infringed goods from U.S. custom to Chinese custom, from import and distribution channel to export and manufacture headstream. In sum, from then on, ZIPPO MANUFACTURING COMPANY may spend less cost to achieve more beneficial effect in the course of maintaining its legitimate IP right in China.

As for FERRERO S.P.A., it instituted legal proceedings against Montresor (Zhang Jiagang) Foodstuff Corp., Ltd., whose TRESOR DORE chocolate used packaging and decoration similar to those for FERRERO ROCHER chocolate, in Tianjin city. FERRERO S.P.A. experienced defeat in the decision of first instance and success in the decision of second instance. On March 26, 2008, the Supreme People's Court made No.3 (2006) decision with the favorable ruling "though long time use and promotion, the packaging and decoration of TRESOR DORE chocolate is capable of distinguish the origin of goods and should be protected against the infringement in the light of Unfair Competition Law.

It should be noted that although foreign enterprises can seek for protection over their reputable product shape or packaging thereof, the Law for Unfair Competition will make legal proceedings rather difficult and complainants bear more burden of proof. Whereas, a proprietor of a valid three-dimensional trademark can has exclusive right and thus enjoy more favorable legal position in possible legal proceedings against similar product shapes with the only burden of proof to show trademark certificates.

Obviously, Beijing No. l Intermediate People's Court made two milestone decisions. It is the first time for the Chinese court to affirm the packaging of products or even the shape of product per se, in the specific circumstance, is capable of being approved of registration and enjoy exclusive trademark protection. In addition, the judicial decisions as the favorable precedents will of course encourage the efforts made by more foreign corporations for acquiring registration of their already reputable packaging of product or shape of product in the Chinese market.