Non-Traditional Marks—East Asia & Pacific Subcommittee Hosts First Policy Dialogue in China

Today’s consumers are increasingly cognizant of nontraditional marks and their influence on purchasing decisions.

INTA’s Non-Traditional Marks (NTM)—East Asia & Pacific (EA&P) Subcommittee held its first-ever dialogue with the China Trademark Association (CTA) to discuss “Non-Traditional Marks: Different Approaches and Lessons Learnt in the Asia Pacific Region.” Approximately 20 trademark practitioners gathered in Beijing, China, on April 23 for this event to explore the ever changing arena of nontraditional marks.

Notable participants representing China trademark authorities included CTA President Ma Fu, China Patent and Trademark Office (CTMO) Deputy Director Fan Yali, and Senior Judge of the Beijing High People’s Court Zhou Bo (now with the Supreme People’s Court). Seth Hays, INTA Chief Representative Officer, Asia-Pacific; Monica Su, INTA Representative Officer, Shanghai, China; and Vicky Dai, Assistant, Shanghai, China, also took part in the dialogue.

Following opening remarks by NTM—EA&P Subcommittee Chair Wei Xin, both Mr. Fu and Mr. Hays remarked that today’s consumers are increasingly cognizant of nontraditional marks and their influence on purchasing decisions. However, the lack of a quantitative indicator to distinguish these marks remains a hurdle.

Committee members Chris Cao (Marquette IP, Australia), Annie Tsoi (Wilkinson & Grist, Hong Kong), and Tomoya Kurokawa (SOEI Patent & Law Firm, Japan) discussed NTM policy and practice in Australia, Hong Kong, and Japan, respectively. In all three jurisdictions, the requirement of “human perception” has replaced the earlier “visually perceptible” requirement in distinguishing the source of goods and/or services, which is the essence of a mark. Although statistics may vary from jurisdiction to jurisdiction, 3D marks, color marks, and sound marks make up the majority of NTMs registered, while motion marks, position marks, and hologram marks remain in the minority.

Each presenter gave concrete examples of successful non-traditional marks registrations, prompting a lively discussion of how distinctiveness is acquired through use. In this regard, the Hong Kong Intellectual Property Department (HK IPD) offers a useful checklist to evaluate evidence (including catalogues, sales figures/invoices, amount of promotional/marketing expenses, store locations, market surveys, and statements from trade) to determine whether the mark in question is used or promoted as a trademark, or operated as an indicator of origin to denote the applicant’s goods/services. In particular, if a mark is used for less than two years, it is unlikely to qualify as continuous use. Rather, a benchmark of five years is more standard.

Ms. Tsoi noted that the HK IPD weighs consumers’ perception heavily when considering such cases. On the other hand, if a mark is always used together with another distinctive element, this may call into question whether the mark itself is distinctive on its own.

Ms. Fan introduced the four steps of NTM examination in China: prohibitory provisions, distinctiveness, similarity check, and functionality examination. He pointed out that a mark will not be allowed to mature to registration if an applicant provides inconsistent views from different angles.

The CTMO maintains a very strict standard regarding NTM examination, even when the applicant provides a disclaimer with the application. Judge Bo echoed the view that consistency is essential in proving the distinctiveness of 3D marks. Speakers from all jurisdictions also noted the common problem of deceptive registrations of two-dimensional marks for products that are in fact used in a 3D manner.

At the conclusion of the meeting, participants agreed that continued NTM policy dialogues would be beneficial to all, and could positively affect the Chinese legislative amendment process in the coming years.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

Published in the INTA Bulletin of June 15, 2019 | Vol.74 No. 10