Study On Distinctiveness Of Trade Dress Protection From The Angle Of "Wong Lo Kat" Case

Trade dress is the visual appearance of a product or service that indicates or identifies the source of the product or service and distinguishes it from those of others. It may include features such as shape, size, color or color combinations and any other overall images. For trade dress to be well protected under the laws and regulations, it must be both non-functional and distinctive. As for the objective in this thesis, the "red-can" is non-functional obviously. Therefore, the primary purpose of this thesis is to focus on the study of distinctiveness concerning trade dress.Distinctiveness is the essence and foundation of trademark, closely related to the establishment of trademark ownership and enforcement of trademark rights. To take word-mark as an example, there are four different categories of terms with respect to trademark protection:(1) generic,(2) descriptive,(3) suggestive, and (4) arbitrary or fanciful, arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded. However, we can not apply the method of classification above to trade dress. Generally, distinctiveness of trade dress will not be considered inherent and can only be acquired through long-time use. There will be no dispute if the trademark and trade dress belong to one single party. If the trademark and trade dress are possessed by two parties, the ownership of trade dress will be a question. The red-canned herbal tea dispute, between Guangzhou Pharmaceutical Holdings Limited (hereinafter as GPH) and JDB Beverage Co., Limited (hereinafter as JDB), has attracted lots of attention for the first time ever in our legal system.Through comparative study and analysis on cases in and abroad, this thesis describes the distinctiveness of trade dress from the perspectives of law and regulations, judicial practice and opinions and study of scholars. By analyzing the distinctiveness of the "red-can", the aim of this thesis is to identify its ownership and provide some suggestions on trademark license contract to both licensor and licensee.There are four parts in this thesis. The first part presents the background information concerning the disputes between GPH and JDB. As for the trademark dispute, the court has held that the trademark "Wong Lo Kat", also known as "Wang Lao Ji", shall be owned by GPH. After that, the "red-can" trade dress dispute arises and now it is on trial in Guangdong Provincial Higher People’s Court.In the second part, the thesis focuses on the study of trade dress, which covers the definition, relevant cases, laws and regulations. Trade dress is a broad concept accumulated by case law in America. In China, it is widely agreed that trade dress should be defined in a broad sense too. Furthermore, relevant cases, laws and regulation, which relate to the trade dress protection, are discussed and illustrated.Next, the major objective of third part is distinctiveness of mark and trade dress. The study on American legal system concludes the methods in relation to the finding of distinctiveness. By exploring the case law system and comparing the cases, it demonstrates the ownership of trade dress right under the trademark license contract. Then, the analysis on "Chen Guang Pen" case in the Supreme Court provides an overview of how to evaluate distinctiveness in China legal system. It is believed that a mark is distinctive inherently, if its intrinsic nature serves to identify a particular source of the product in the minds of the public. According to the legal practice, a trade dress is not inherently distinctive in general, but may acquire distinctiveness if it has developed secondary meaning through use for a very long time.Finally, the issues of the "red-can" case are listed. On the analysis of inherent distinctiveness and acquired distinctiveness, it concludes that the "red-can" trade dress and "Wong Lo Kat" trademark should be both owned by GPH. The use of "red-can" and "Wong Lo Kat" trademark has created an association between the trade dress and a source in the mind of the consumer. In that way, from the perspective of consumer recognition and identification, the "red-can" has acquired distinctiveness through the use of "Wong Lo Kat" trademark, which should be possessed by the owner of trademark. Even though the licensee has put enormous efforts into the trade dress, the right of "red-can" shall not be transferred and should be possessed by the trademark owner GPH.