Pushing the boundaries with non-traditional trademarks

Amendments to China’s Trademark Law has expanded the scope for registering unconventional marks but significant challenges for applicants remain, say Gang Hu and Justin Jiang of China Patent Agent (HK).

Non-traditional trademarks refer to any new types of trademarks which do not belong to a conventional category of trademark, but which may nevertheless be capable of distinguishing the origin of goods and services.

According to the current China Trademark Law, only three types of non-traditional trademarks are acceptable for registration in China: three-dimensional (3D) trademarks, colour combination trademarks and sound trademarks. In China, registration of non-traditional trademarks is a big challenge in practice. The applicant must not only prove that the non-traditional trademark is non-functional, but that it has already acquired distinctiveness in the market and can distinguish the origin of the goods or services.

3D trademarks

A 3D trademark can be composed of solely 3D symbols or 3D symbols plus other 2D elements. In practice, 3D trademarks are generally represented by the 3D shape of the product itself, the 3D shape of the product packaging or container, or other 3D shapes. A 3D trademark cannot be registered if it is only a shape resulting from the nature of the goods themselves, a shape of the goods necessary for achieving a technical effect, or a shape which gives a substantive value to the goods.

To apply for registration of a 3D trademark, the applicant should make a statement in the application form, explain how the 3D trademark is used, and submit a drawing that can determine the 3D shape. The submitted trademark drawing should include at least three views.

“To apply for registration of a sound trademark, the applicant should submit a qualified sound sample, and describe the applied-for trademark in the trademark drawing.”

According to the China National Intellectual Property Association (CNIPA) official website, 7,585 3D trademark applications were filed between 2015 and 2023, and 5,345 of them were registered. However, registration of most of these marks was attributable to their distinctive 2D elements. The number of registered 3D trademarks that are composed of 3D elements solely are nominal.

Due to its special form of expression, a 3D trademark is likely to be perceived as part of the product, the product itself or the outer packaging of the product, etc by the relevant public. As a result, a 3D trademark is unable to fulfil the basic function of distinguishing the source of goods or services as a trademark. During prosecution of an application for registration of a 3D trademark, the applicant shall submit sufficient evidence to prove the use of the 3D trademark.

Colour combination trademarks

A colour combination trademark refers to a trademark that is composed of two or more colours combined in a specific way. Its scope of protection is limited to the colour combination itself used in a specific way, and does not include specific shapes. The shape presented in the trademark design is not within the scope of protection. Colour combination trademarks can be used on all or part of goods or product packaging, or on carriers required for services.

To apply for registration of a colour combination trademark, the applicant should submit a clear colour trademark drawing. This should be a colour block indicating the combination of colours, or a graphic outline indicating the position where the colour is used. The graphic outline is not a component of the trademark and must be represented by a dotted line rather than a solid line. In addition, the trademark application form shall include a statement regarding how the colour combination trademark is used on the designated goods or services.

“This slight reversion gives other unusual types of elements, such as single colour, smells and flavours, a strong legal basis to be registered as a trademark.”

According to CNIPA’s official website, 418 colour combination trademark applications were filed between 2015 and 2023, but only 32 of them were registered.

Consumers usually think that a colour combination trademark is the decoration or decorative design of the product itself, packaging or carrier of service. It may be difficult for the relevant public to identify a colour combination as a sign indicating the source of the goods or services. Therefore, colour combination lacks the inherent distinctive features which are required for a trademark. Only through long-term or extensive use, which establishes a stable connection between the colour combination and the applicant, can colour combination acquire the distinctive features that a trademark should have. The original creation or earliest use of a colour combination does not automatically give rise to its distinctiveness as a trademark. During prosecution of an application for registration of a colour combination trademark, the applicant shall submit sufficient evidence to prove the actual use of the colour combination trademark and the stable connection that has been established with the said trademark and the designated goods or services.

Sound trademarks

A sound trademark refers to a trademark composed of sound itself, which is used to identify and distinguish the source of goods or services. A sound trademark can be composed of musical sounds such as music, or it can be composed of non-musical sounds in nature, such as human or animal sounds, or it can be composed of sounds with both musical and non-musical properties.

To apply for registration of a sound trademark, the applicant should submit a qualified sound sample, and describe the applied-for trademark in the trademark drawing. The description of the sound trademark should be consistent with the sound sample. In addition, the trademark description should include a statement as to how the sound trademark is used on the goods or services.

According to the CNIPA official website, 950 sound trademark applications were filed between 2015 and 2023, but only 21 were registered.

Generally speaking, it is likely for consumers to recognise a sound trademark as a sound produced by the product itself, or the background music, advertising slogans, etc, but it is not likely for consumers to recognise a sound trademark as a sign indicating the source of the product or service. Even if a sound is unique, it does not necessarily have the inherent distinctive characteristics of a trademark. Therefore, under normal circumstances, when applying for registration of a sound as a trademark, sufficient evidence needs to be submitted to prove that it has acquired distinctive features as a trademark through long-term or extensive use. The original creation or earliest use of a sound does not automatically give rise to its distinctiveness as a trademark. During prosecution of an application for registration of a sound trademark, the applicant shall submit sufficient evidence to prove the actual use of the specific sound and the stable connection that has been established with the said trademark and the designated goods or services.

Tencent—one of China's biggest IT companies—provided a large amount of evidence concerning use of its sound mark ‘Di Di Di Di Di Di’. It had also acquired distinctiveness as it is used as the default notification sound of instant messaging software QQ. In this case, the court ruled in favour of Tencent.

In practice, most of the applications for non-traditional trademarks are likely to be refused by CNIPA, and the applicants can file reviews on refusal with CNIPA to contest the refusal. Once a non-traditional trademark is refused by CNIPA, it is also very hard to overcome such refusal in the subsequent review on refusal proceedings.

Challenges remain for ‘unusual’ marks

Though it is not easy to obtain protection of non-traditional trademarks, China trademark practice has made progress in protecting such trademarks. For example, a single colour trademark is not officially recognised as a form of non-traditional trademarks under China Trademark Law. Nevertheless, the French fashion brand Christian Louboutin achieved a breakthrough. Christian Louboutin attempted to secure its red sole trademark in China in 2010, but it was refused on the grounds of being indistinctive. Christian Louboutin appealed to the Supreme People’s Court who made a judgment in Christian Louboutin's favour by asserting that the China Trademark Law does not expressly exclude using a single colour at a specific position on a product.

The amendments to China’s Trademark Law released by CNIPA for public comment in 2023 has slightly adjusted the scope of the types of elements that can be legally registered as a trademark by providing that the types of symbols that can be registered as a trademark include text, graphics, letters, numbers, 3D symbols, colour combinations, sounds and “other elements”. This slight reversion gives other unusual types of elements, such as single colour, smells and flavours, a strong legal basis to be registered as a trademark. These new types of trademarks pose many challenges to the traditional trademark law. Unlike traditional trademarks, smell trademarks are not visually recognisable and it would be hard to describe such smell trademarks in words. In addition, the smells recognised by one person may be different from another.

With the economic growth worldwide, there is an increasing demand for more forms of trademarks. Though non-traditional trademarks have been gradually accepted in more and more jurisdictions, many issues still need be solved in protecting and enforcing such non-traditional trademarks. There is still a long way to go. The benefits of seeking to register a non-traditional trademark include a strong competitive edge for trademark holders and a reputational boost. Nevertheless, consideration must be given to the costs involved and the risks in seeking registration of non-traditional trademarks. Therefore, trademark holders should engage a local trademark attorney with rich practical experience, to formulate a careful application strategy to achieve final success in obtaining registration.

Gang Hu is deputy general manager at China Patent Agent (HK). He can be contacted at: hgang@cpahkltd.com

Justin Jiang is a trademark attorney at China Patent Agent (HK). He can be contacted at: jtao@cpahkltd.com