Subject to the Trademark Law, an application for trademark registration may be filed for any visually perceptible mark that has distinctive characteristics, is easily identifiable, and can distinguish the goods of one natural person, legal person or other organization from those of another. It is obvious that a trademark’s being distinctive and easily identifiable relates to nothing other than its function of distinguishing the sour ce of the relevant goods . Therefore, packaging which is capable of distinguishing the source of goods has the distinctiveness required of a trademark and can be registered as such.

Although packaging may be combinations of words, figures, letters, numerals, colors, and shapes, what makes a three dimensional trademark is first of all its distinctive shape. Without a distinctive shape, a trademark is not three-dimensional in the true sense of the term. Therefore, in discussing the registration and protection of packaging as three-dimensional trademarks, the first important point is the shape, or the combination of shapes and colors.

Whether goods’ packaging is distinctive can be decided based on consumer recognition. For the ordinary consumer, ordinary and commonly used packaging is just packaging, providing no indication of the source of the goods. In its ruling involving Ferrero SpA’s registration of its chocolate packaging as a threedimensional trademark, Beijing High People’s Court stated:

"If a three-dimensional mark is merely the general or ordinary packaging of designated goods, or is as a whole incapable of distinguishing the source of goods, it is devoid of distinctiveness. The mark for which registration is applied is a transparent rectangular container and is ordinary packaging. The attached decorative ribbon takes up only a small proportion of the whole mark. Although one can see the golden ball-like products inside the transparent container, the overall visual effect is still a transparent rectangular container. The container is not inherently distinctive because it cannot serve as an indication of the source of the relevant goods. As Ferrero SpA actually placed the “FERRERO ROCHER” logo on a prominent place on the said container and its decoration, there was no evidence proving that the container without the said logo has acquired distinctiveness through use in Mainland China. "

This ruling reiterates the principle that general or ordinary packaging is not inherently distinctive. Theoretically, the law does not exclude from trademark protection general or ordinary packaging which has acquired distinctiveness through use. In practice, however, packaging used commonly by more than one producer cannot acquire distinctiveness and enable consumers to associate it with only one source.

If packaging is new and unique, most consumers will recognize it as a “new packaging” upon first sight, rather than associate it with any particular producer. Only after some time, when consumers realize that only this particular producer is using the new packaging, will they gradually associate the packaging with the particular producer. In this way, the new packaging becomes a distinctive indicator of the source of goods through use and becomes “packaging peculiar to wellknown goods” under China’s Anti-Unfair Competition Law.

In its repor t on the adjudi cat ion of intellectual property cases in 2008, Beijing High People’s Court stated, “Where packaging peculiar to some goods becomes, after long term use, an indication of the source of the goods, it may be registered as a three-dimensional trademark.” It is therefore obvious that current judicial practice supports “acquired distinctiveness of peculiar packaging through long term use.” Surely the time will come, years from now, when three-dimensional marks become so familiar to the public that a new and unique packaging will be immediately a distinctive indication of the source of goods to the consumer. Then peculiar packaging will be inherently distinctive. However, this is not the case at the present stage.

Currently, packaging with particular shapes, even very original ones, is to the consumers no more than new packaging or containers, distinguishable from other packaging of the kind, but not a distinctive indication of the source of goods, and is thereby not protectable or registrable as trademarks. Only packaging peculiar to well-known goods, with acquired distinctiveness through use and not comprising the shape which gives substantial value to the goods, is registrable as a there-dimensional mark.

In an Administrative Judgment (2007 Yi Zhong Xing Chu Zi No.815), Beijing No.1 Intermediate People’s Court decided:

"Ferrero SpA applied for registering a trademark (packaging) which consisted of the three-dimensional shape of a ballshaped praline wrapped in gold colored creased paper, set in a brown and gold base with ripple patterns. The choice of its colors and form of packaging is not within the range of ordinary industry choices for the designated goods. The originality of the trademark (packaging) under application has made it a symbolic image for Ferrero chocolates. The consumer, upon seeing it, can clearly make out the source of goods whereon is attached the said trademark. Therefore, the trademark under application possesses the distinctiveness required of a trademark."

This decision seems to have substituted originality for distinctiveness, believing that original and peculiar packaging is inherently distinctive. This viewpoint does not conform to the current consumer recognition habits and may need further consideration.

Indeed, if an original and unique packaging is combined with the original words and figures appended to it and considered as a whole, the distinctive character of the unique words and figures may give distinctiveness to the packaging as a whole, or the overall design of the unique packaging and decoration may be inherently distinctive. The Supreme People’s Court decided in an unfair competition case (2006 Min San Ti Zi No.3)that:

“The overall design of the FERRERO ROCHER chocolate packaging and decoration, consisting of words, figures, colors, shapes and sizes, is protectable. The protected overall design is different from a trademark in three-dimensional representation…As far as free designing goes, unique arrangement or combination of elements that compose the packaging and decoration can have a distinctive character capable of distinguishing the source of goods. Then this packaging and decoration becomes peculiar to the relevant goods. FERRERO ROCHER’s packaging and decoration have a distinctive overall image because of the unique arrangement of the words, figures, colors, shapes and sizes peculiar to the chocolate. And this distinctiveness is non-functional. Through long term use and much publicity, the relevant public associates the overall image with FERRERO ROCHER chocolate, with the packaging and decoration indicating the source of the goods.”

It means peculiar overall design of packaging and decoration can be inherently distinctive and registrable as a three-dimensional trademark. There is no problem with the overall design of packaging and decoration acquiring distinctiveness through use and the whole being registered as a three-dimensional trademark. However, it is uncertain whether this kind of trademark can provide effective protection to the shape of packaging alone.

From a jurisprudential viewpoint, ordinary packaging is a public resource and the public have a right to use it. Trademark registration of packaging would harm the public interest and economic order, and not follow the legislative intent in establishing the trademark registration regime. New and original packaging, on the other hand, is in itself an innovative creation. To encourage creative work, protection may be afforded to it by granting a design patent, which will strike the optimal balance between the interests of the designer and those of the public. If all peculiar packaging were afforded permanent and monopolized protection as three-dimensional trademarks, the creative works would be permanently out of reach of the public. This would hinder social progress.

However, packaging peculiar to wellknown goods is protectable as a threedimensional trademark. This is to protect the business reputation embodied in the peculiar packaging, to protect consumer interests by making it easier for the consumer to identify goods’ sources, and to safeguard fair competition. Although it may have some overlap with the design patent regime, it attains the optimal balancing point between the interests of the right holders and those of the public, and is therefore a successful IP protection regime.

As outlined above, the success of the three-dimensional trademark regime lies in the proper understanding of what constitute distinctiveness. The relevant criteria should be rigidly observed and only packaging peculiar to wellknown goods should be approved for registration. This would follow the intent of Trademark Law. Otherwise, the threedimensional trademark regime would be in danger of being misused or abused to harm the public interests and fair competition.

By Zuo Yuguo, Lifang & Partners