Rsearch On Substantial Examination For Registration Of Three-dimensional Trademarks

As the fast development of economy, a growing number of three-dimensional trademarks have been applied for registration in China in recent years. Different from traditional two-dimensional trademarks, the protection of three-dimensional trademarks in China started later, thus leaving a limited experience as how to examine the registration of the three-dimensional trademarks, compared to the situation in developed countries. Even so, the three-dimensional trademarks cannot be examined in the same way as those of two-dimensional ones since the procedures of examination of three-dimensional trademarks are much more complicated. Although in the past 14 years, great progress has been made in examining three-dimensional trademarks, there still exist many problems. For example, the current examination is still in accordance with The Trademark Examination Standards in 2005, causing doubt whether the standards lag behind the social development. It is still not quite clear as how to identify the relationship of distinctiveness and non-functionality, how to improve the distinctiveness and fill the gap of non-functionality in registration. The on-going examination is mainly the integration of formal examination and substantive examination. The Trademark Examination Standards enumerate three functional three-dimensional devices that cannot be registered, i.e. those devices in the shape originating from the nature of the goods, existing for achieving technical effect of the goods or enabling the goods to keep substantive value. The standards also list three situations that trademarks lacking distinctiveness cannot be registered: i.e. those only having the generic names, designs or models of the goods in respect of which the trademark is used; those only h aving direct reference to the quality, main raw materials, function, use, weight, quantit y or other features of thegoods in respect of which the trademark is used; others lackin g in distinctive features. The above mentioned criteria play a significant guiding role, but the standards do not give us a detailed explanation in judging the distinctiveness and functionality of three-dimensional trademarks.American Trademark Manual of Examining Procedure has made detailed regulations in the distinctiveness and non-functionality of designs of the goods. It creates three standards to judge non-functionality: the practical standard, competitive need standard and aesthetic non-functionality standard. In functional evidence requirements, it puts forward utility-model patent evidence and practical evidence at the bases of integration of various elements. In judgment of distinctiveness, it fixes the consideration factors of the package and designs of the goods and the standards of proof of secondary meaning through legal precedent. European Union also has a mature operation to judge the non-functionality and distinctiveness of three-dimensional marks. EU gives priority to the judgment of non-functionality rather than distinctiveness. In judgment of non-functionality, according to EU, even if applicants can provide evidence to prove the distinctiveness of those three-dimensional devices featuring non-functionality, the devices cannot be registered. As to the judgment of distinctiveness, EU will examine whether consumers can recognize the particular proprietors offering goods or service. While the Japanese distinguish itself from the above two in that they will consider the state of the devices to judge whether they obtain distinctiveness. In examining non-functionality, Japanese pay much attention to alternative design and substitute cost. The reason is that the increase of substitute cost will influence fair market competition, thus to put competitors at a disadvantage. In examination of distinctiveness, Japanese combines Americans’ standards of proof of secondary meaning with EU’s theory of consumer recognition and establishes its own judgments. In Taiwan, the judgment of non-functionality is related to the cost or methods of manufacturing. If the cost is relatively cheaper than others, or the manufacturing methods are more flexible, the device is functional. While in judging distinctiveness, they not only take into consideration of consumers’ recognition but also the features of the goods. The design or the shape of the package is part of goods itself. From the perspective of consumers’ recognition, it is usually thought to be decorative devices rather than the symbols to differentiate the origins of the goods.The paper will focus on the substantial examination of registration requirements of three-dimensional trademarks and introduce related theories abroad and home. Through a comparative study of theories and practice abroad and home, the paper tries to conclude the beneficial parts and effective practices so as to provide some suggestions for the improvement of examination of three-dimensional trademarks in China. There are three parts in the paper. The first chapter describes the current circumstances of examination of three-dimensional trademarks in China and points out existing problems in the field. In the second chapter, the writer expounds the examination principles and registration standards of three-dimensional trademarks abroad and makes a comprehensive study of the judgment standards of distinctiveness and non-functionality. In the third chapter, after a thorough study of foreign theories and practices related to the judgment of distinctiveness and non-functionality, the writer sums up abroad effective and mature operations in the field and presents his individual suggestions to amend and perfect the domestic examination of three-dimensional trademarks.With the substantial examination of registration of three-dimensional trademarks as its consistent thread, the paper takes several influential cases both abroad and home as its examples to make clear theories. By combining theories with practice and introducing questions then giving answers, the paper is quite clear both in structure and theme. The originality of the paper lies in its suggestions to revise Article 12 in Trademark Law of The. P.R.C. In writer’s opinion, it should be put as followed: “Those devices in the shape originating from the nature of the goods, existing for achieving technical effect of the goods or enabling the goods to keep substantive value, even though they have obtained distinctiveness, shall not be registered as three-dimensional trademarks. There shall have a clear differentiation in the legislation between the judgment of non-functionality and distinctiveness at the beginning. The judgment of non-functionality shall be independent of that of distinctiveness and be given priority in sequence. In addition to that, the classification examination censorship of three-dimensional trademarks shall be further refined. The three-dimensional trademarks should be classified reasonably. Then the examination should be operated separately according to their categories so as to increase examination efficiency. In the judgment of distinctiveness, the secondary meaning should be taken into consideration; that is to make clear proof elements and onus of proof. In the aspect of non-functionality, the paper draws into western judgment standards, such as competitive need standard, practical standard and aesthetic non-functionality standard. By combining the above three standards with China’s domestic practice and applying theories into practice, the paper is expected to contribute a bit to the improvement of examination of three-dimensional trademarks registration in China.