The China National Intellectual Property Administration (CNIPA) issued Guidance on Distinctive Characters for Nontraditional Trademarks on 29 December 2023. In the first of two articles, Ling Zhao and Shufang Zhang summarise the Guidance.

What are non-traditional marks?

The term non-traditional trademark was proposed in the Singapore Treaty on the Law of Trademarks to refer to types of trademark other than traditional textual and graphic trademarks. In accordance with the current China Trademark Law, only three kinds of non-traditional trademarks are acceptable for registration in China: threedimensional (3D) trademarks, colour combination trademarks and sound trademarks. Other types of non-traditional trademarks, such as single-colour, position and motion marks are yet to be acceptable in China.

The Guidance is formulated to help relevant business entities to better understand the requirements on distinctive character of nontraditional trademarks and to provide guidance on registration and use of non-traditional trademarks. The Chinese version of the guidance can be accessed on CNIPA's website here.

The Guidance includes three parts to address the distinctive characters of the three types of non-traditional trademarks. In this article, we will look at the 3D trademarks. Colour combination and sound marks will be examined in a follow-up article.

3D trademarks

In practice, a 3D mark is generally presented as the 3D shape of the goods or the packaging or container of the goods, or other three-dimensional shapes.

When applying for a threedimensional trademark, the applicant must claim the mark as a 3D mark and submit drawings that can identify and define the 3D shape. Drawings showing at least three different views must be submitted.

According to the Guidance, when a three-dimensional mark is composed of the following elements, the mark is considered to lack distinctiveness if:

  • it is the 3D shape of the good itself, parts of the shape or appearance of the goods. For instance, the device in figure 1 used on the goods "clocks and watches" is liable to be regarded as the appearance of the goods and is considered to lack distinctiveness;
  • it is the shape of the packaging or containers of the goods. For instance, the device shown in figure 2 used on the goods "condiments" is considered to be the shape of condiment containers and also lacks distinctiveness;
  • it is a simple or ordinary threedimensional shape or a threedimensional shape that serves a decorative function as a trademark. For instance, the device in figure 3 is liable to be regarded as an ordinary 3D shape and to lack distinctiveness;
  • it is the shape of a generic or commonly used article in the service industry for the provision of relevant services. For instance, the device in figure 4 used on "amusement park services" is easily regarded as the specific content of the service and lacks distinctiveness.

Acquired distinctiveness

When a three-dimensional mark is considered to lack distinctiveness, evidence must be submitted for the purpose of registration to prove acquired distinctiveness by long-term and extensive use.

Disclaimers

A trademark that is a combination of a 3D shape that lacks distinctive features and other 2D elements with distinctive features is generally regarded as bearing distinctive features in its entirety, but the applicant must disclaim the exclusive rights to the 3D shape part, and the disclaimer shall be included in the registration certificate as well as the Trademark Gazette.

The applicant cannot claim exclusive rights for the 3D part that does not have distinctive features. If the proportion of twodimensional elements is too small or is in a position that is not easily recognisable, or if the mark as a whole is easily recognised as packaging decoration or the decorative appearance of the goods, etc., instead of as a trademark, then the trademark as a whole does not possess distinctive character.

For instance, even though there are words such as "MONTBLANC", "MEISTERSTUCK" on the threedimensional shape shown in figure 5, as the proportion of the words are small, this sign is still considered to lack distinctiveness when used on the goods "fountain pens".

Colour combination trademarks

A colour combination trademark refers to a trademark consisting of the combination of two or more colours in a particular manner.

The scope of protection of colour combination marks is limited to the combination of the colours used in a particular manner and does not include specific shapes. The shapes presented in the trademark specimen are excluded from the scope of protection. A colour combination mark can be used for the whole or part of the goods or the packaging of the goods and can also be used for carriers of services.

Colour combinations are liable to be recognised as the appearance of product, packaging or decoration of a service carrier or decorative design and are generally considered as nondistinctive.

Colour combination marks can obtain distinctive features only after a fixed connection is established between the combination of colours and the trademark applicant through longterm and extensive use.

Whether the colour combination is original or first used by the applicant does not necessarily indicate that it bears distinctive features as a trademark.

The applicant must submit a description of the colour combination mark and the way it is to be used on the goods or services.

According to the Guidance, when a colour combination mark is composed of the following elements, the mark is considered to lack distinctiveness when it is:

  • the natural colour or common colour combination of the designated goods. For instance, as the colour combination of figure 1 is a commonly used colour combination on an electric grinding machine, this sign is considered to lack distinctiveness when used on "electric grinding machine";
  • the regular form of the packaging of the goods with a colour;
  • the common colour combination of the place of designated services.

Evidence needs to be submitted to prove acquired distinctiveness by long-term and extensive use of the mark and the stable connection between the colour combination mark and its designated goods or services.

Sound marks

Sound marks are trademarks consisting of sounds that can identify and distinguish the source of goods or services. A sound trademark may consist of musical sounds or non-musical sounds such as the sounds of nature, humans or animals or sounds with both musical and non-musical elements.

Unlike word or device marks, sound marks rely on sound carriers and are recognised through the sense of hearing. As sounds are easily recognised by consumers as sound produced by the goods themselves, background music, advertising phrases and the like, a sound mark is usually not regarded as a trademark indicating the source of the goods or services.

In general, when filing an application for a sound mark, it is necessary to submit evidence to prove that the sound has acquired distinctive features through longterm and extensive use.

Where filing an application for a sound mark, a sound sample and statement describing the content of the sound must be submitted; the descriptions of the sound mark and the sound sample must be consistent.

The way the sound mark is to be used for its designated goods or services must also be stated in the description of the mark.

According to the Guidance, when a colour combination mark is composed of the following elements, the following are considered to lack distinctiveness:

  • A sound that directly indicates the content, target consumers, quality, function, usage and other characteristics of the designated goods or services. For instance, "Piano Sound" is considered to distinctiveness when used on goods such as "Musical Instruments"; "children's laughter" lacks distinctiveness on goods such as"infant formula";
  • A sound that can usually be heard in the process of the use of goods or the provision of services. For instance, the sound of "tapping" and "banging" that is usually made when opening a bottle lacks distinctiveness when used on goods such as"beer" and "wine";
  • Music that is common to the industry or commonly used in the industry. For instance, the melody of "Wedding March" lacks distinctiveness when used on services such as "Wedding Planning and Arrangement Services".
  • A sound that is too simple or too complex. For instance, using the entire melody of "To Alice" on services such as kindergartens is considered to lack distinctiveness as it is too complex.
  • A word or phrase that is directly sung, read, spoken or otherwise called out in an ordinary tone or simple melody. For instance, speaking "Here you go" in the usual tone lacks distinctiveness.

Evidence must be provided to prove acquired distinctiveness by long-term and extensive use of the sound mark and the stable connection between the mark and its designated goods or services.

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.