Since the promulgation of the Trademark Law in 1982, China’s trademark protection system has evolved from covering only traditional forms like word marks and device marks to opening up to non-traditional marks.
Through four revisions of the Trademark Law, non-traditional marks such as three-dimensional marks, colour combination marks and sound marks have successively been taken under the scope of protection, while the administrative and judicial authorities continue to explore and accumulate experience in trademark registration and enforcement.
The latest fifth draft revision to the law further responds to practical needs for protection of non-traditional trademarks, proposing to include motion marks as registrable trademark types, reflecting a proactive legislative approach toward non-traditional trademark types.
This article outlines the protection of non-traditional marks in China in terms of application and registration, administrative enforcement and judicial protection, which serves as a helpful reference for enterprises when formulating domestic and international trademark protection strategies.
Application and registration
Partner
Tahota Law Firm
Tel: +86 10 8586 5151
E-mail: xiao.wang@tahota.com
Although the law keeps expanding the scope of registrable trademark types, registration and protection for non-traditional trademarks in China remain challenging. In practice, the thresholds for registering such marks are significantly higher than those for traditional trademarks, and the scope of protection is defined more strictly.
Distinctiveness is one of the core factors determining whether a trademark can be registered. Many applications for non-traditional trademarks are often refused during the preliminary examination stage due to a lack of inherent distinctiveness, forcing applicants to submit a large amount of evidence of use proving that the marks have gained distinctiveness through use, and established a stable and exclusive association with the applicants before registration may be granted.
These applicants submitted lots of evidence of use proving that such marks were already serving the function of identifying the source of goods or services, before they were greenlit for registration.
In the examination of three-dimensional marks, it is also necessary to consider if the mark possesses function features as prescribed under article 12 of the Trademark Law. The non-functionality requirement serves to maintain institutional balance between the Patent Law and the Trademark Law, preventing anyone from exercising permanent monopoly on any inventions or designs through the trademark system, thus harming the public interest.
As the first case to grant criminal protection to a colour combination trademark in China, it not only confirms that colour combination trademarks may fall within the scope of protection for registered trademarks under the criminal law framework, but also provides important guidance on how to determine identical trademarks in relation to non-traditional trademarks.
In addition, article 8 of the Trademark Law adopts a non-exhaustive enumeration approach, leaving institutional room for the protection of non-traditional trademark types. Although China’s current legislation has not explicitly recognised position marks as a registrable trademark type, judicial practice has provided guidance.
Whether such a sign may be approved for registration depends on if it satisfies the requirements for trademark registration, such as distinctiveness. This has laid the groundwork for the legislative protection of position marks and other types of non-traditional trademarks.
With ongoing revisions of the Trademark Law, China’s protection system for non-traditional trademarks has become increasingly sophisticated, providing solid legal support for enterprises in shaping brand value in the era of sensory marketing.
Enterprises should adopt a forward-looking approach to the development of their brand assets, attach greater importance to the protection of non-traditional trademarks, and maximise the realisation of brand value.
Wang Xiao is a partner at Tahota Law Firm. He can be contacted by phone at +86 10 8586 5151 and by email at xiao.wang@tahota.com
Kelly Liu is an associate at Tahota Law Firm. She can be contacted by phone at +86 8586 5151 and by email at zhihan.liu@tahota.com
