Does a 3D trademark registration give you invincibility in China?

Following a recent judgment from the Guangdong High Court, the answer to this question seems to be "no".

The dispute concerned the use of a square-based brown bottle by Guangdong Kaiping WeiShiDa Seasoning Co Ltd, which allegedly infringed Nestlé’s registered rights in the three-dimensional (3D) mark for a brown bottle with a yellow cap (for its Maggi sauce) under International Registration 640537, obtained in 1995 (and extended to China in 2005).

On appeal of a declaration of non-infringement sought by WeiShiDa, the Guangdong High Court upheld the judgment of the Jiangmen Intermediate Court in WeiShiDa’s favour on the basis that:

• Nestlé’s 3D mark, albeit registered, was relatively weak in terms of distinctiveness.
• Before Nestlé’s registration in China in 2005, some Chinese enterprises, including WeiShiDa, had already used similar bottles in their packaging for their seasoning products.
• Nestlé’s 3D mark was not sufficiently well known in China.
• WeiShiDa used the brown bottle only by way of packaging with the brand “WeiShiDa MASTER” prominently placed thereon; as a result, consumers associated the products exclusively with WeiShiDa and there could be no consumer confusion as to the origin of the products.

Despite its registration, in this instance Nestlé failed to secure exclusive use of its brown bottle in China. Whether this can be attributed to China’s protectionism or to Nestlé’s failure to react promptly to WeiShiDa’s use remains unknown.

The Chinese trademark regime will continue to evolve. In order to meet the challenges ahead, brand owners should equip themselves with a strategy that is compatible with the conditions in China.