Article 8 of the Trademark Law Any sign capable of distinguishing - PDF document

12/6/2016 Reception and examination of non-conventional trademark applications Trademark Review and Adjudication Board of the State Administration for Industry and Commerce Wang Jihong, Nov. 2016 Article 8 of the Trademark Law  Any sign capable of distinguishing the goods of a natural person, a legal person, or any other organization from The third those of others, including but not amendment of the trademark law in limited to word, pattern, letter, 2013 included numeral, three- dimensional symbol, sound marks in the scope of trademark combination of colors, and sound, as registration and protection. well as a combination of the above, may serve as a trademark for registration application. 1

12/6/2016 Non-conventional trademark-3D trademark  A 3D trademark is one that consists of a three dimensional mark or in combination with other elements. A 3D trademark may be the shape of a product itself, product packaging or other three-dimensional signs.  formal examination of 3D trademarks  In the case that the applicant intends to file for a 3D trademark, such an intention shall be declared in the application. Where no such declaration is made, a 2D trademark is filed for as default.  The applicant shall submit trademark pattern that are sufficient to determine the three-dimensional shape of the mark, and that include at least three view projections of the mark.  The applicant shall specify the use mode of the 3D trademark in commercial activities in detail. 2

12/6/2016 The use mode of the trademark Applicant ： Changrongsheng Medical Technology Applicant: Taipei Financial Center Corporation Co., Ltd. Goods: jewellery Goods ： Vitamin preparations ， human medicine Use mode: the 3D pattern of the landmark Use mode: the 3D trademark is used as the shape TAIPEI101. The trademark will be used as goods of the goods, the shape of the package case, the package 3D distinctive mark or 3D advertisement object in offices and in show windows.  legality examination of 3D trademarks （ Article 10 of the Trademark Law ） Case study: Review of rejection of the registration application for No. 1221416 device trademark  Applicant: PHILIPP PLEIN The Trademark Review And Adjudication Board ruled that: the candidate trademark is a skull with no other constitutive elements, which is prone to startle the relevant public and cause negative effects. It falls into the circumstance referred in article 10.1.8 of the Trademark Law of the People’s Republic of China. 3

12/6/2016 Beijing Intellectual Property Court, Judgment (2016) Jingzhixingchu No. 2843 In the present case, the disputed trademark consists of a skull covered with small diamonds. Given the density of the diamonds, the mark is in general viewed as a vivid skull which would cause fear, startle the general public and bring about negative influences. The registration of other trademarks raised by the plaintiff is not relevant to the present case, nor could they prove that the dispute trademark should be registered. The evidence submitted by the plaintiff did not prove the registrability of the disputed trademark. In light of the above, the defendant’s decision that the disputed trademark falls into the circumstance referred in article 10.1.8 of the trademark law is correct and shall be upheld by this Court.  examination of the distinctiveness of a 3D trademark (Article 11 of the Trademark Law) Case study: Review of rejection of the international registration No. 1221520 3D device trademark Applicant: Gaishibao Spain Company 4

12/6/2016 The Trademark Review And Adjudication Board ruled that This Board holds that the candidate trademark is a three dimensional shape of a sprayer that is to be used as a container of manual sprayer for agricultural, horticultural, industrial and household purpose (excluding sprayer for medical purpose). As the candidate trademark is not easily be recognized as a trademark by consumers due to its lack of the due distinctiveness of a trademark, it has fallen into article 11.1.3 of the Trademark Law. The evidence on record submitted by the plaintiff is not sufficient to prove the registrability of the candidate trademark on the designated class 8 goods. In accordance with article 11.1.3, Article 30 and Article 34 of the Trademark Law, the Board decided that: The application of extended protection on China’s territory for the candidate trademark on the designated class 8 goods is denied.  examination of the non-functionality of a 3D trademark (Article 12 of the Trademark Law) Case study: Review of opposition of the registration application of No. 3031816 device (three dimensional) trademark Applicant (the opponents in the first instance): Wenzhou Star Smoking Sets and Optical Ltd. Co. Wenzhou Smoking Sets Association Respondent (respondent in the first instance): Zhibao Manufacturing Co. The designated goods: lighters 5

12/6/2016 The Trademark Review And Adjudication Board ruled that In the present case, the opposed trademark is a three dimensional one that represents that shape of a lighter with the overall visual effect of a cuboid. The upper and lower parts are connected by a hinge, with the lower part longer than the lower one. The front, back and the bottom are flat with rounded corners and a slight arch at the top. Specifically, the cuboid shape is convenient for holding and carrying, the use of the upper lid is for security purposes and the higher lower lid facilitates refilling fuel and configuring inner parts. Such a design, which brings a more reasonable shape and more convenient functions for a lighter, is resulted from the nature of the good. The hinge between the upper and lower lids are for connection purposes, and hence, shapes necessary for achieving a technical effect. Secondly, the opposed trademark in the shape of a lighter is simple. The rounded corners and the slightly arched top more comfortable than rectangular corners, which could avoid scrap as well as provide aesthetic function. Such a design could have a substantial influence on the consumption behaviour of the relevant public, and is a shape to add a substantive value to the goods. In light of the above, the opposed trademark falls into the circumstance referred in Article 12 of the Trademark Law. Beijing High People’s Court Judgment (2015) Gaoxing(zhi)zhongzi No. 4355 Therefore, it is correct for the Trademark Review and Adjudication Board and the first instance court to hold that the shape of the opposed trademark is functional and should render the trademark unregistable. Zhibao’s grounds for appeal that the opposed trademark is not functional is not with factual basis and shall not be upheld by this court. In the event that the trademark shall not be registered due to its functionality, the acquisition of distinctiveness through use is relevant to the registrability of the trademark. hence, this Court would not review grounds on the acquired distinctiveness and the relevant evidence. In light of the above, and in accordance to Article 89.1.1 of the Administrative Procedural Law of the People's Republic of China, it is hereby decide that: The appeal is denied and the original judgment is upheld. 6

12/6/2016  examination of the priority of a 3D trademark (Article 13 of the Trademark Law) similar similar similar Non-conventional trademark-sound trademark  A sound trademark is one consists of sounds that are able to distinguish the source of goods or services. A sound trademark may consist of musical sounds such as a piece of melody, non- musical sounds, such as the sound of nature, a human being or an animal, or a combination of musical and non-musical sounds. 7

12/6/2016 The first sound trademark registered in China The opening tune of a show by China Radio International this sound trademark is the opening tune of a show by China Radio International. 40 seconds long, it is divided into 18 bars, with two-fourths slow pace and alternation of G major and C major. The first 4 bars are the intro of the sound trademark, which is G major. The middle 11 bars are the body in C major, among which the announcer announces the China Radio International at the 12th and the 13th bar. The body concludes with 2 bars after. The last 3 bars are the refrain played with the celesta, with which the sound trademark ends in G major. 8

12/6/2016  formal requirements for registration of a sound trademark  (1) Where an application is filed for registering a sound trademark, it shall be stated in the application,  (2) the applicant shall submit a sound sample that meets the prescribed requirements  (3) a description of the sound mark to be registered shall be provided,  (4) the applicant shall indicate under the circumstances for the use of the sound trademark (use of the trademark) sound sample Where the sample is submitted with tangible material, the applicant  shall submit a read-only disc with only the audio file. Where the sample is submitted electronically, the applicant shall correctly submit the audio-file the audio file shall be in wav or mp3 format with a size of less than 5 MB  the sound sample shall be consistent with the trademark description  (explanation or description of the scores or texts) the sound shall be clearly discernible in the sample  9