It is now eight years since China's trade mark law was amended
to provide for the registration of 3-D marks. The law was
amended in December 2001, and since then thousands of 3-D trade
marks have been registered. But on what basis have they been
registered? Does a 3-D trade mark enjoy the same protection as
a traditional mark?
What is a 3-D trade mark?
A 3-D trade mark is a
three-dimensional sign, or a combination of three-dimensional
signs, colours, words and devices. It may be the shape of a
product, or its container or packaging, or it may be a cartoon
character, figurine or statue.
Not all three-dimensional signs will,
however, be registrable. Three-dimensional signs will not be
registrable if they:
n result merely from the nature of the
goods themselves; for example, the shape of a buckle is not
registrable in relation to buckles;
n are necessary to obtain a technical
result; for example, if the shape of a switchboard is
determined by its function it will not be registrable; or
n add substantial value to the goods.
For example, the shape of a unique knife handle design will not
be registrable if the handles add substantial value to the
In addition, a 3-D sign must be
distinctive from the common shape of the goods, or packaging of
the goods, in respect to which registration is sought.
Otherwise the 3-D sign will not be capable of distinguishing
the goods of the trade mark owner from the goods of others.
Why register a 3-D mark?
A unique shape will help attract
the attention of consumers. It will also help them
differentiate your goods from the goods of others. You may,
therefore, wish to take some measures to ensure that you have
exclusive rights in the shape of your product or product
There are various forms of protection for
shapes: copyright, design patent and 3-D trade mark
The rights secured by trade mark
registration are particularly strong. Unlike copyright and
design patents, registered trade marks can be renewed
How are 3-D marks registered and
In practice, the Chinese Trade
Mark Office grants registrations to 3-D signs if:
n the shape has acquired
distinctiveness through widespread use, such as with the
n the shape is considered as a whole,
i.e. together with a distinctive device, words and/or colours,
the shape is deemed to be sufficiently distinctive. The
'Heineken Beer Can' below is an example of this.
A large proportion of the 3-D trade marks
that have been granted in China fall into the latter category.
The trade mark owner will be able to action if both elements,
i.e. the shape and the traditional marks, are used.
The scope of the protection available to
3-D marks is generally not as great as that available to
Because a large proportion of registered
3-D trade marks lack distinctiveness in terms of the shape
alone, the owners' exclusive rights in the shape itself will be
limited. Also, enforcement can be more difficult. Compared with
traditional marks, there are relatively few 3-D marks and law
enforcement authorities at all levels lack experience and
expertise in dealing with them.
Where the shape element of a mark
is not, in itself, distinctive, the trade mark owner should
endeavour to make the relevant public aware of his rights in
the shape. This is likely to reduce the likelihood of
infringement. Then, once the link between the particular 3-D
shape and the owner of the 3-D trade mark registration has been
established, distinctiveness will have been acquired and it
will be possible to enforce the trade mark registration.