[Jian Xu] Do you buy it because it is good-looking? Aesthetic functionality for 3D marks in China - Comment on Nestle's 3D mark of bottle on food flavours

The most subjective and unpredictable issue in the absolute ground of refusal for 3D marks is the so called “aesthetic functionality”. In the case that the 3D sign is not technically functional, but just aesthetically appealing, it is not the breakaway from the absolute ground of refusal. One should also consider whether the aesthetic feature confers substantial value (or substantial competitive advantage) to determine the buying behaviour of consumers. If yes, then the 3D mark is aesthetically functional and cannot be registered..

The above wording of aesthetic functionality sounds convoluted and complicated. In essence, it all boils down to one simple question for normal consumers, i.e. “Do you buy it because it is good-looking?” This is the last issue in the recent Beijing court decision on Nestle’s 3D trade mark.

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 acquired distinctiveness and its related evidence presentation.

You might wonder why, since the court already determined that Nestle’s 3D mark lacks inherent distinctiveness and acquired distinctiveness, is it necessary to consider the point of aesthetic functionality. However, as the court correctly pointed out, although Nestle’s 3D mark lacks acquired distinctiveness now due to insufficient evidence, one cannot exclude the possibility that Nestle might be able to prove acquired distinctiveness in the future with more substantial evidence of use/reputation in China. If this happens, then the question on whether Nestle’s 3D mark can be refused on absolute grounds due to aesthetic functionality is inevitably the issue to be debated on. Therefore, the court will still comment on whether Nestle’s 3D mark is aesthetically functional.

As mentioned above, the court basically asked one question in the shoes of a normal consumer, “do I buy this product mainly because the 3D shape is good-looking?” In some products such as fluffy toys, it is very likely that consumers buy this toy mainly because how it looks. However, in Nestle’s product on food flavours, the court is of the view that, although the novel and good-looking bottle shape might influence the buying behaviour of the consumers to a certain extent, it is not the decisive factor. For food flavours and similar products, consumers normally pay more attention to other factors such as the quality, the reputation of the producer, etc. Hence, Nestle’s 3D mark is not aesthetically functional.

Nestle’s 3D mark of bottle on food flavours covers all interesting and controversial issues surrounding 3D marks. At the end of the day, although Nestle lost this mark, it is not absolutely dead yet. As long as Nestle can prevail on acquired distinctiveness, it might be able to re-register the 3D mark. Again, this shows how important it is for brand owners to store and collect good evidence of use/reputation in China for its brand, particularly for 3D marks.