A 2018 decision concerning the J’adore 3D trade mark has been chosen as a guiding case in China. Ling Zhao of the MARQUES China Team explains why the case is important.

On 24 December 2019, the ruling of the Supreme People’s Court (SPC) on the retrial of the refusal of Parfums Christian Dior’s 3D trade mark for J’adore perfume was selected as guiding case number 114.

Since 2011, the SPC has announced 135 guiding cases in various fields. The selected guiding cases are of great significance and are binding on Chinese courts. The SPC has only selected a few trade mark-related cases as guiding cases.

The retrial of the refusal of the J’adore 3D trade mark was one of the most high-profile IP cases in China in 2018: the SPC announced a final judgment on 26 April, World Intellectual Property Day, reversing the decisions of the lower courts and the review board.

Refusal for lack of distinctiveness

Christian Dior filed an application for the J’adore perfume bottle 3D trade mark through the Madrid System and extended for protection in China. The China National Intellectual Property Administration (CNIPA) refused the application for lack of distinctiveness under Article 11, 1 (3) of the China Trademark Law.

Christian Dior filed for a review with the review board. After the appeal was rejected, it filed further appeals at the Beijing Intellectual Property Court, Beijing High Court, and then finally a retrial application at the Supreme People’s Court.

Christian Dior claimed that its J’adore perfume bottle trade mark was mistakenly categorised as a device trade mark, instead of a 3D trade mark, and that the decision of the CNIPA was made incorrectly due to this procedural illegality.

IR number 1221382

The trade mark (illustrated) was applied for the goods “perfumery, perfumes, eau de parfum, eau de toilette, eau-de-cologne, perfume extracts, scented body milks, scented oils and lotions for the body, shower perfumed lotions, perfumed shower gels, bath lotions, scented gels for the bath, scented soaps, scented shampoos; make-up for the face, eyes and lips; nail and nail care products” in Class 3. The mark is the form of fine and long figure eight, with a small globe at the top and an oval shape at the bottom, adorned in gold.

But according to Rule 13 of the Implementing Regulations of the China Trademark Law, the applicant for a 3D trade mark shall submit a drawing capable of determining the 3D shape, which shall at least contain 3D views, and describe the way in which the trade mark is to be used.

Christian Dior supplemented the drawing with 3D views during the review procedure, and claimed that the trade mark contained the word “J’adore” and should be considered sufficiently distinctive. It also claimed that through long-term use and publicity on a wide scale, the trade mark had acquired stronger distinctiveness.

The review board of CNIPA still rejected the application, on the grounds that the trade mark was a bottle device, and could be viewed a common container for the designated goods, so that it lacked inherent distinctiveness. Further, there was insufficient evidence to prove the acquired distinctiveness of the mark.

Procedural illegality

After failing in the review procedure, and then in two instances of court appeals, Christian Dior filed a retrial petition at the SPC. It argued that the trade mark was filed as a 3D mark through the Madrid System, and it was wrong for the China Trademark Office to examine it as a common device mark.

The trade mark should have been examined as it was filed with WIPO, instead of as how the application was recorded in the internal system of the China Trademark Office. The applicant should have been given the opportunity to supplement the trade mark sample of three views, before the China Trademark Office issue the provisional refusal. The review board made a decision based upon the incorrect record, and thus the decision was wrong in procedure.

Distinctiveness and the principle of consistency

Registration number 7505828 in Class 3

The SPC ordered the review board to re-examine the trade mark as a 3D trade mark. The Court also commented that the review board shall take the following factors into consideration: 1) if the trade mark has distinctiveness or acquired distinctiveness by use in the market. The evidence filed by the applicant can show that the trade mark has been used in the Chinese market for a long time and use and publicity in the market makes it possible for the related public to identify the perfume bottle as a trade mark. 2) the principle of consistency in examination criteria, for the applicant has a valid Chinese registration for the same J’adore perfume bottle (see picture).

Even though the SPC did not directly rule in the decision that the J’adore perfume bottle 3D trade mark had or had acquired distinctiveness, it did imply that the evidence could possibly lead to such a conclusion, especially when considering that the same J’adore perfume bottle 3D trade mark had been registered in China.

Approval by CNIPA

Following the SPC decision, CNIPA made a new decision. Based on the evidence filed by Christian Dior proving the selling of J’adore perfume in the Chinese market in the years 2012 to 2017, advertisements in magazines, media reports, awards, sales rankings, etc. in China, CNIPA ruled that through wide-scale publicity and promotion, Christian Dior’s J’adore perfume had acquired a reputation in Chinese market, and the J’adore perfume bottle 3D trade mark had acquired distinctiveness by use on perfume. The J’adore 3D trade mark was thus approved for registration in China for perfume in Class 3.

This is a very good example of how to determine the distinctiveness of a 3D trade mark, and how to prove distinctiveness acquired by use.

This case also raised questions about how the procedures of international registrations should be harmonized with national applications. Under the current practice, there is no procedure of amendment, either regarding the trade mark specimen or the descriptions of goods/services, for international registrations with extension to China. Foreign applicants might have encountered similar situations, where the China Trademark Office issues a provisional refusal, due to the unacceptable descriptions of goods. Such refusals can be avoided if there is an opportunity to correct the description of goods.

Ling Zhao is a trade mark attorney and attorney-at-law with CCPIT Patent and Trademark Law Office and a member of the MARQUES China Team

The third IP Case Law Conference (IPCLC) will be held in Alicante on 21 and 22 May 2020.

It is organised by the EUIPO Board of Appeal, International Cooperation and Legal Affairs Department and Academy.

EUIPO says:

The IPCLC brings together leading intellectual property experts from around the globe, representing a broad spectrum of professional interests. Users of the international IP systems, practitioners, judges from national jurisdictions and from the General Court as well as well as representatives from National Offices will gather in Alicante to discuss the latest developments in IP case law.

The conference will focus on some of the live issues currently engaging the IP community, such as:

• The multiple facets of bad faith
• The interaction between trade marks and human rights
• Analysing reputation at Member State and EU level
• How IP rights intersect with new technologies (video games, 3D printing and blockchain)
• The interplay between geographical indications, certification and collective marks.

As with previous conferences, the IPCLC 2020 is designed to be as innovative and user-focused as possible. It will be held in an interactive format with ample opportunity for questions from the audience.

The language is English and the participation fee is €150 (including dinner on 21 May). You can register online.

WIPO has published information on changes to the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement.

From 1 February 2020, these will become the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International registration of Marks.

The change indicates that the Protocol is the sole treaty governing international applications and registrations under the Madrid System.

WIPO highlights a change to the amended Rule 30, which simplifies renewal of international registrations:

For Contracting Parties that have declared for an individual fee per class, the renewal fee will be calculated taking into account only the number of classes for which protection has been granted.

The simplification means that holders of international registrations who have been granted partial protection and are appealing such decision will no longer be required to pay individual fees for classes that are not protected upon renewal. 

Consequently, item 4 of the renewal form MM11 and the corresponding option in e-Renewal will be removed because they will no longer be required. Item 4 was used to give instructions to renew the international registration for all the goods and services with respect to a Contracting Party where the mark had been only partially protected. The new MM11 form will be available for download as from February 1, 2020.

Where a designated Contracting Party, which has declared for an individual fee per class, informs in a further statement of a change in the goods and services protected, the next renewal fee in respect of that Contracting Party will be calculated in accordance with this further statement.

For more details, see Information Notice No 1/2020.

Look out for more analysis of these changes from the MARQUES International Trade Mark Law and Practice Team soon.

WIPO has announced that it has received 10 candidatures for the post of Director General.

The current Director General, Francis Gurry, is due to retire on 30 September this year after completing two six-year terms.

The 10 candidates are:

• Prof Adebambo Adewopo (Nigeria)
• Mr Marco Matías Alemán (Colombia)
• Mr Ivo Gagliuffi Piercechi (Peru)
• Dr Edward Kwakwa (Ghana)
• Mr Kenichiro Natsume (Japan)
• Mr Dámaso Pardo (Argentina)
• Mr Jüri Seilenthal (Estonia)
• Mr Daren Tang (Singapore)
• Ms Saule Tlevlessova (Republic of Kazakhstan)
• Ms WANG Binying (China)

Member states had until 30 December 2019 to propose candidates.

The WIPO Coordination Committee will meet on 5 and 6 March 2020 to nominate a candidate for appointment. This Committee comprises 83 WIPO member states.

The procedures for nomination and appointment state: “The nomination of a candidate for Director General should, if possible, be made by consensus. This will facilitate the appointment of the Director General by the General Assembly. However, it is recognized that voting will probably be a necessary means of building consensus for the nomination of a candidate. Efforts to nominate a candidate via consultations leading to consensus are welcome at any stage of the selection process, but such efforts should not unduly delay the decision-making process.”

In the last election, in 2008, there were 15 candidates and several rounds of voting. In the final round, Mr Gurry secured 42 votes and his rival Mr Jose Graça Aranha received 41.

Once nominated, the successful candidate will be appointed by the WIPO General Assembly, which meets on 7 and 8 May 2020.

The terms of outgoing Deputy Directors General and Assistant Directors General also expire on 30 September 2020.

The next Director General will be WIPO’s fifth, following Mr Georg Bodenhausen, Mr Arpad Bogsch, Dr Kamil Idris and Mr Gurry.

This year’s programme of Tuesday webinars hosted by the EUIPO Academy kicks off on 14 January with an overview of General Court and CJEU decisions of the trimester. The webinar is in English and runs from 10:00 am to 11:00 am (Spanish time).

Other webinars already scheduled include:

• 21 January: (1) New EUIPO Guidelines and (2) IPR-intensive industries and economic performance in the EU
• 28 January: (1) Likelihood of confusion and (2) Changes in the 12^th edition of the Locarno Classification
• 4 February: Case Law on Community Design
• 11 February: Absolute grounds for refusal – shape of goods
• 25 February: IPR and Video Games (Joint EUIPO-EPO Interactive Webinar)

All are free to join, and the recordings can be viewed soon after they take place. For more details about the topics, timings, speakers, languages and how to join, visit the EUIPO Academy Learning Portal.

The European Commission has published a new report on protection and enforcement of IP rights in third countries. The report identifies priority countries, split into three categories reflecting the scale and persistence of problems:

1. China
2. India, Indonesia, Russia, Turkey, Ukraine
3. Argentina, Brazil, Ecuador, Malaysia, Nigeria, Saudi Arabia and Thailand

The list reflects the fact that more than 80% of counterfeit and pirated goods seized by EU customs authorities come from China and Hong Kong.

The report also sets out actions the Commission has taken in the pat two years, including technical support, awareness-raising and training.

Industries that use IP intensively accounted for some 84 million European jobs and 45% of the total EU GDP in the period 2014 to 2016. 82% of EU exports were generated by industries intensively using intellectual property. In these sectors, the EU has a trade surplus of around 182 billion euros. An estimated 121 billion euros or 6.8% of all imports into the EU is counterfeit or pirated.

Launching the report, Commissioner for Trade Phil Hogan said:

Protecting intellectual property such as trade marks, patents, or geographical indications is critical for the EU’s economic growth and our ability to encourage innovation and stay competitive globally. As much as 82% of all EU exports is generated by sectors which depend on intellectual property. Infringements of intellectual property, including forced technology transfer, intellectual property theft, counterfeiting and piracy threaten hundreds of thousands of jobs in the EU every year. The information gathered in the report will enable us to become even more efficient in protecting EU firms and workers against intellectual property infringements like counterfeiting or copyright piracy.

Find out more and download the report here.

Roland Mallinson reviews a new book, The Confusion Test in European Trade Mark Law by Ilanah Fhima and Dev S Gangjee (published by Oxford University Press, price £125 and available here).

For its narrow subject matter, this book has nevertheless proved invaluable within less than a day of me owning a copy. My judge in a case heard the day after the book launch had, like me, read salient bits of the book and was referring to them during the hearing. The debate was certainly better informed and more interesting as a result (the decision is pending…). The book is well researched and well written. I can’t recommend it enough (that is unless you’re in a case against me, in which case it’s really not worth buying at all).

Many cases covered

In 254 pages, the authors have comprehensively distilled and catalogued approximately 100 CJEU cases, 250 General Court cases and 200 UK cases (court, UKIPO and Appointed Person decisions), as well as a handful of EUIPO and Board of Appeal decisions, all deciding likelihood of confusion (LOC) between two marks. The case index includes 40 German decisions, a few Belgian, French, Finnish, Irish, Italian, Dutch and Spanish ones (to give a spread around the EU), three from Switzerland and Norway (to cover off EEA/EFTA), four Australian cases and 12 US ones. That’s a lot of case law analysed in relation to just two sub-paragraphs of the relevant EU Regulation (Articles 8(1)(b) and 9(2)(b) of Regulation 2017/1001).

The book follows the formula adopted by at least the EU and UK tribunals when considering likelihood of confusion (LOC), namely:

• similarity of the marks (as sub-divided with sections on visual, aural and conceptual similarity);
• similarity of the goods/services (looking at each of the Canon factors in turn, including a detailed look at functional complementarity versus aesthetic necessity); and
• the global assessment of LOC (considering the merit and impact of accounting for the UK courts’ “a significant proportion of the relevant public” or the CJEU’s hypothetical “average consumer” within this test).

Weighing the factors

Each of these chapters give an overview and introduction that explains the origin and likely weight of the various factors to be considered. There are also chapters with a separate focus on composite marks (this is especially helpful and looks at partial identity and ‘figleaf’ marks, amongst other hot topics), distinctiveness (including discussions around spill over reputation and swamping) and non-traditional marks (also dealing with the tricky issue of identifying what is the defendant’s mark or sign in such cases). Timing of the LOC test also has its own chapter, with an incisive review of cases about initial interest (pre-sale) and post-sale confusion.

The authors start by noting that LOC has been a neglected subject: “under-analysed and under-studied”. This book does well to redress that, in particular seeking to explain the reasoning behind some cases (often where the non-specialist CJEU and General Court judges have not always done so clearly themselves). The writing is engaging and succinct. The headings are clear and it easy to find the cases to help build an argument for or against LOC. Despite the analytical steps and factors to consider in the LOC test being well established, the authors recognise that judges and tribunals have struggled to apply them and articulate their decisions without them appearing subjective and arbitrary. They point out where the law is uncertain and are critical of it when it’s at its most formalistic and doctrinal, e.g. where judicial practice errs too much towards ‘procedural economy’.

Interesting observations in the book include spotting that EUIPO Boards of Appeal consider similarity of the marks before goods/services, whereas the UKIPO deals with the latter first. The authors conclude that the UKIPO approach tends to lead to less finding of LOC. They have also picked up on the tendency for European tribunals to weigh up fewer of the known factors when comparing goods/services than when comparing marks/signs. Their analysis of the many General Court cases also concludes that distinctiveness of the senior mark seems to hold less sway as a factor before this tribunal.

A must-have

These and many other practical observations will make this and, no doubt, future editions of this book a must-have for the serious trade mark practitioner. Let’s hope the publishers make it available online soon. Later editions might also want to reflect the outcome of the current CP8, CP9 and CP11 EUIPO Convergence Programmes (CP3 and CP5 only seem to get a few mentions).

Roland Mallinson is a partner of Taylor Wessing in London and a member of the MARQUES Executive Team