A 2018 decision concerning the J'adore 3D trade mark has been chosen as a guiding case in China. Ling Zhao of the MARQUES China Team explains why the case is important.
On 24 December 2019, the ruling of the Supreme People's Court (SPC) on the retrial of the refusal of Parfums Christian Dior's 3D trade mark for J'adore perfume was selected as guiding case number 114.
Since 2011, the SPC has announced 135 guiding cases in various fields. The selected guiding cases are of great significance and are binding on Chinese courts. The SPC has only selected a few trade mark-related cases as guiding cases.
The retrial of the refusal of the J'adore 3D trade mark was one of the most high-profile IP cases in China in 2018: the SPC announced a final judgment on 26 April, World Intellectual Property Day, reversing the decisions of the lower courts and the review board.
Refusal for lack of distinctiveness
Christian Dior filed an application for the J'adore perfume bottle 3D trade mark through the Madrid System and extended for protection in China. The China National Intellectual Property Administration (CNIPA) refused the application for lack of distinctiveness under Article 11, 1 (3) of the China Trademark Law.
Christian Dior filed for a review with the review board. After the appeal was rejected, it filed further appeals at the Beijing Intellectual Property Court, Beijing High Court, and then finally a retrial application at the Supreme People's Court.
Christian Dior claimed that its J'adore perfume bottle trade mark was mistakenly categorised as a device trade mark, instead of a 3D trade mark, and that the decision of the CNIPA was made incorrectly due to this procedural illegality.
The trade mark (illustrated) was applied for the goods "perfumery, perfumes, eau de parfum, eau de toilette, eau-de-cologne, perfume extracts, scented body milks, scented oils and lotions for the body, shower perfumed lotions, perfumed shower gels, bath lotions, scented gels for the bath, scented soaps, scented shampoos; make-up for the face, eyes and lips; nail and nail care products" in Class 3. The mark is the form of fine and long figure eight, with a small globe at the top and an oval shape at the bottom, adorned in gold.
But according to Rule 13 of the Implementing Regulations of the China Trademark Law, the applicant for a 3D trade mark shall submit a drawing capable of determining the 3D shape, which shall at least contain 3D views, and describe the way in which the trade mark is to be used.
Christian Dior supplemented the drawing with 3D views during the review procedure, and claimed that the trade mark contained the word "J'adore" and should be considered sufficiently distinctive. It also claimed that through long-term use and publicity on a wide scale, the trade mark had acquired stronger distinctiveness.
The review board of CNIPA still rejected the application, on the grounds that the trade mark was a bottle device, and could be viewed a common container for the designated goods, so that it lacked inherent distinctiveness. Further, there was insufficient evidence to prove the acquired distinctiveness of the mark.
After failing in the review procedure, and then in two instances of court appeals, Christian Dior filed a retrial petition at the SPC. It argued that the trade mark was filed as a 3D mark through the Madrid System, and it was wrong for the China Trademark Office to examine it as a common device mark.
The trade mark should have been examined as it was filed with WIPO, instead of as how the application was recorded in the internal system of the China Trademark Office. The applicant should have been given the opportunity to supplement the trade mark sample of three views, before the China Trademark Office issue the provisional refusal. The review board made a decision based upon the incorrect record, and thus the decision was wrong in procedure.
Distinctiveness and the principle of consistency
The SPC ordered the review board to re-examine the trade mark as a 3D trade mark. The Court also commented that the review board shall take the following factors into consideration: 1) if the trade mark has distinctiveness or acquired distinctiveness by use in the market. The evidence filed by the applicant can show that the trade mark has been used in the Chinese market for a long time and use and publicity in the market makes it possible for the related public to identify the perfume bottle as a trade mark. 2) the principle of consistency in examination criteria, for the applicant has a valid Chinese registration for the same J'adore perfume bottle (see picture).
Even though the SPC did not directly rule in the decision that the J'adore perfume bottle 3D trade mark had or had acquired distinctiveness, it did imply that the evidence could possibly lead to such a conclusion, especially when considering that the same J'adore perfume bottle 3D trade mark had been registered in China.
Approval by CNIPA
Following the SPC decision, CNIPA made a new decision. Based on the evidence filed by Christian Dior proving the selling of J'adore perfume in the Chinese market in the years 2012 to 2017, advertisements in magazines, media reports, awards, sales rankings, etc. in China, CNIPA ruled that through wide-scale publicity and promotion, Christian Dior's J'adore perfume had acquired a reputation in Chinese market, and the J'adore perfume bottle 3D trade mark had acquired distinctiveness by use on perfume. The J'adore 3D trade mark was thus approved for registration in China for perfume in Class 3.
This is a very good example of how to determine the distinctiveness of a 3D trade mark, and how to prove distinctiveness acquired by use.
This case also raised questions about how the procedures of international registrations should be harmonized with national applications. Under the current practice, there is no procedure of amendment, either regarding the trade mark specimen or the descriptions of goods/services, for international registrations with extension to China. Foreign applicants might have encountered similar situations, where the China Trademark Office issues a provisional refusal, due to the unacceptable descriptions of goods. Such refusals can be avoided if there is an opportunity to correct the description of goods.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.