Three-dimensional trademarks have become increasingly significant as a means for companies to distinguish their brands with unique shapes and a strong visual presence. However, compared to traditional trademarks, the process of registering and protecting three-dimensional trademarks is more intricate, raising various legal challenges.
A three-dimensional trademark, as the name suggests, consists of three-dimensional signs or elements. These can include the distinctive shape of the product itself, creatively designed packaging, or other three-dimensional markers that identify the origin of goods or services through their unique form. Due to their distinct visual appeal, three-dimensional trademarks can effectively convey key brand information, enhancing brand recognition among consumers.
Forms of Three-Dimensional Trademarks
Three-dimensional trademarks come in various forms, including:
Decorative shapes unrelated to the product: These trademarks bear no direct connection to the goods or services and serve purely as independent three-dimensional symbols. For instance, some brands use specific sculptures or shapes as trademarks that, while unrelated to the product, are highly recognisable.
Unique shapes of products or packaging with textual or graphic elements: These trademarks merge the shape of the product with embossed or engraved text and graphics, creating a complete three-dimensional trademark. For example, a soap bar with embossed text and graphics becomes easily identifiable due to its distinctive shape and design.
Shapes of product packaging: Certain uniquely designed packaging shapes can also qualify as three-dimensional trademarks. These packages not only protect the product but also convey brand identity through their unique design.
Shapes of the product itself: In some cases, the product’s shape alone can be registered as a three-dimensional trademark. For example, a triangular mesh biscuit shape registered in the EU has been granted trademark protection due to its distinctive appearance.
Principles and Challenges of Three-Dimensional Trademark Registration
Registration Principles: The registration of three-dimensional trademarks must adhere to the general principles of trademark registration, such as legality and distinctiveness, as stipulated in Articles 10, 11, and 12 of the PRC Trademark Law.
Legality: Three-dimensional trademarks must not violate public order or decency, and must not mislead consumers about the nature, quality, or origin of the goods or services.
Distinctiveness: To be registered, a three-dimensional trademark must be sufficiently distinctive to set it apart from other goods or services. However, determining distinctiveness for three-dimensional trademarks is often more complex, especially when the trademark involves the shape or packaging of a product.
Non-functionality: Shapes that are essential to the nature or function of a product cannot be registered as three-dimensional trademarks, as functional shapes are more appropriately protected by patent law rather than trademark law.
Controversies and Challenges
The protection of three-dimensional trademarks has long been a contentious issue, particularly before the signing of the TRIPS Agreement. While three-dimensional trademarks, with their unique visual appeal and recognisability, help consumers identify the source of goods, their protection can clash with copyright and patent laws, especially design patents. As a result, the protection of three-dimensional trademarks has historically been somewhat limited.
Strategies for Protecting Three-Dimensional Trademarks
Broadening Trademark Registration: It is advisable for companies to register their three-dimensional trademarks promptly under PRC Trademark Law to secure early protection. Additionally, international trademark registration should be considered to prevent disputes over trademark squatting.
Defensive Registration: To protect against the use of similar three-dimensional trademarks on related goods or services, companies should adopt defensive registration strategies. This involves registering trademarks for related goods or services to effectively prevent infringement.
Trademark Monitoring: Companies should regularly monitor the "Trademark Gazette" issued by the CNIPA to stay informed about trademark registrations, changes, transfers, licenses, and cancellations. If a trademark similar to their registered trademark is preliminarily approved, companies should promptly file oppositions or other actions to protect their trademark rights.
Infringement and Enforcement: If a three-dimensional trademark is infringed upon, companies should file a complaint with the local MSA or initiate a lawsuit. Providing sufficient evidence of infringement is crucial for the authorities to take swift and effective action.
Establishing an Evidence Database: It is recommended that companies maintain a comprehensive evidence database related to their trademarks, including sales data and advertising expenses. This information is vital for establishing the reputation and inherent value of the trademarks and is essential in cases of trademark infringement litigation.
Three-dimensional trademarks are a critical component of corporate branding and play a significant role in a company's long-term success in terms of protection and management. However, the registration and protection of these trademarks can be complex and challenging.
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