Sweet success for Ferrero Rocher in first decision on 3D marks

The Beijing First Intermediate People’s Court has granted Ferrero SPA’s appeal against the Trademark Review and Adjudication Board’s (TRAB) refusal to allow Ferrero to extend its three-dimensional (3D) trademark (International Registration 783985) to China.

In May 2002 Ferrero registered the 3D representation of the packaging of its famous Ferrero Rocher chocolates on Class 30 goods covering, among other things, chocolates. In September 2002 it sought to extend the international registration to China. The mark consists of a gold sphere with a small white oval imprint and a gold and white border, set in a brown and gold base. The colours claimed are gold, brown, white and red.

The China Trademark Office decided that the 3D mark in question was inherently indistinctive. On review, the TRAB maintained that the mark was merely a common packaging for chocolates and thus unregistrable. On appeal to the court, Ferrero submitted evidence showing that its mark had acquired distinctiveness by extensive use. However, the court did not base its decision on this evidence because it had not been submitted during the previous examination.

Despite this, the court still held that Ferrero’s mark was sufficiently distinctive for registration as the colours and layout of the mark denoting the packaging of Ferrero’s goods are not commonly used in the industry for such goods. Therefore, consumers would readily associate Ferrero’s mark with its goods. The mark was thus allowed on prima facie basis. This is the first court decision allowing the registration of a 3D trademark in China.