[Jian Xu] 3D trade marks are presumed to be low on inherent distinctiveness in China - Comment on Nestle's 3D mark of bottle on food flavours

Although 3D trade marks have been recognised in China for quite a while, many applicants would still find that it is not easy to either register or enforce a 3D trade mark. A recent Beijing court decision affirms that attitude that 3D trade marks are generally presumed to be lack of inherent distinctiveness. Consequently, it is important for the applicant to resort to acquired distinctiveness for 3D marks, which translates into presenting evidence of extensive use/reputation in China.

Nestle filed a 3D trade mark (International Registration No. 640537) on food flavours in 2002, which is a bottle for containing the food flavours (picture of the mark below).
Although the mark is registered, a competitor in the food flavour industry, Master (under the group of Heinz) seeks to cancel the registered 3D mark. In the Beijing court decision, the judges elaborated on the issue of (a) inherent distinctiveness, (b) acquired distinctiveness, as well as (c) aesthetic functionality for 3D trade marks. This article focuses on the criteria of inherent distinctiveness while the remaining issues will be analysed in subsequent articles.

The Beijing court laid out the principle that “As a whole, 3D trade marks have relatively low inherent distinctiveness”. From a common sense perspective as well as market acceptance, most consumers would still perceive a trade mark as being a 2D sign rather than a 3D article. Therefore, 3D marks are usually presumed to be low on inherent distinctiveness.

There are usually three ways to use a 3D mark, i.e. (1) to act as the shape of the goods; (2) to act as the packaging of the goods; and (c) to act as a decoration of the goods/services. For situation (1) and (2), the mark describes the quality or character of the goods, so they do not have inherent distinctiveness. Only if the 3D mark is a kind of decoration, then it is possible for it to have inherent distinctiveness.

In Nestle’s case, the 3D mark is the container bottle of the registered goods, thus it lacks inherent distinctiveness.

Nestle argued that the bottle shape is created by the company and is very novel. For a 2D mark, if the sign is created/artificial, it is deemed to have high distinctiveness. However, the court pointed out that the same cannot apply to 3D marks. Again, this comes down the assumption that consumers would usually associate a 2D sign printed on the goods/services as a trade mark, but usually would not associate a 3D sign/article as a trade mark identifying the source of the producer. If the consumers see a novel/artificial 2D sign, they tend to think this identifies which is the producer. However, even if the consumers see a novel 3D design/article, they would still just think this is a novel design or shape or packaging of the product, but not the identification of the producer. Thus, the court is of the view that whether the 3D mark is created or artificial or novel has no direct relationship with its inherent distinctiveness. In other words, for 3D marks, the mark itself is not important in relation to inherent distinctiveness, but the way it is used.

Consequently, for brand owners which seriously wants to enforce a 3D mark which is the shape or packaging of the goods, it is all the more important that they should take steps to accumulate evidence of extensive use/reputation in China to prove “acquired distinctiveness”, rather than relying too much on arguments to inherent distinctiveness.