2014 Christian Dior registered its J’adore perfume bottle as a 3D trademark and also an international registered trademark. Following the Madrid Agreement and the Madrid Protocol, Dior applied a territorial extension protection in China through the international bureau of WIPO. The TRAB of the SAIC rejected the application on July 13, 2015 with the reason of lack on distinctiveness. Dior filed a application for review of the refusal, but was also rejected with the same reason. After that, Dior submitted a administrative case to the court against TRAB’s decision, but failed by first and second instance. At last Dior applied for retrial to the Supreme People’s Court. On April 26, 2018 the Supreme People’s Court of China brought in a verdict that Christian Dior won the trial in the administrative dispute with the TRAB about the review of refusal, the TRAB must re-review this trademark application.
The issue in this administrative dispute case or rather in this 3D trademark registration case is first the application procedure of territorial extension protection and second the recognition of distinctiveness.
As an international registered 3D trademark, the J’adore perfume bottle usually should be considered automatically as 3D trademark by the application in China. Dior submitted only a front view photo of the bottle and marked the trademark as 3D in the trademark file when it made the application in China through the international bureau of WIPO. However TRAB in this case assumed that the to be registered trademark is a normal trademark on the grounds that Dior did not submit supplementary materials, which are required by the law for 3D trademark registration, to the TRAB within three months after the application came into the Chinese system.
TRAB also rejected the distinctiveness of the J’adore perfume bottle. TRAB deemed on one hand, that glass, the material of the bottle, as a packaging container for perfume is not significant to consumers. On the other hand, perfume is a common consumer product. The shape of its packaging container is very common and should not be applied as a trademark. Dior believes that the design of the bottle is tailor-made for the one specific product J’adore perfume, and through a continuous, extensive, large-scale usage and promotion, it gained a high reputation and got a strong distinctiveness. Furthermore Dior already registered a figurative trademark in the same class in China using the photo of J’adore perfume bottle. TRAB should act under the principle of consistency.
The Supreme People’s Court of China decided in favor of Christian Dior. The TRAB should make a new review decision consider the following factors: First, the distinctiveness of the trademark and the distinctiveness obtained through usage. And second, the principle of consistency by review of application.
To register a 3D trademark in China is difficult. Foreign companies need usually professional help to come safe through the application process. We are happy to assist you with your trademarks.
Disclaimer: This article was first published on LinkedIn by Daniel Albrecht on https://www.linkedin.com/pulse/dior-3d-trademark-registration-case-daniel-albrecht/