Cases give new hope for 3D mark enforcement in China

Owners of three-dimensional (3D) trademarks have reported a series of recent successes in enforcing their rights against infringers through administrative actions in China. These include victories by Hennessy and Kraft Foods, whose unique Hennessy XO Bottle and Toblerone triangular packaging and triangular chocolate bar shape respectively (see below) have increasingly been the targets of infringers in China, as the country’s appetite for quality food products continues to grow.

Chinese Reg No 3240985

Infringing version

International Reg No G615992

International Reg No G615994

Infringing version

Although the protection of 3D trademarks has been written into the Trademark Law of the People’s Republic of China since 2001, there have been few instances of successful enforcement. In the Hennessy and Kraft Foods Cases, the administrative authorities for industry and commerce in Guangdong and Fujian had no experience in handling 3D mark infringement. Therefore, the positive outcomes were possible only through the support of their superior offices.

It is known that officials at the Chinese Trademark Office are divided on the nature and scope of protection accorded to 3D trademark registrations. Some take the view that a 3D mark is registrable only if it bears a word or device mark, and that the presence of any two-dimensional marking on a 3D mark is a material consideration when comparing similarity. So far, few court decisions have been made in the area of 3-D mark infringement.

As a result, the administrative enforcement of rights in 3D marks is still an onerous task requiring considerable persuasion of officials.