The 18th World IP Day: A good day in China for J’adore Dior

On the 18th World Intellectual Property Day, the Supreme People’s Court of China (the SPC) reheard the administrative dispute between PARFUMS CHRISTIAN DIOR (Dior) and the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce (the TRAB) over the “J’adore” 3D mark application. The trial was presided by Madame Tao Kaiyuan, who is currently the Vice-president and the only female Grand Justice of the Second Rank at the SPC. Thanks to the advance of judicial openness, the webcast of the entire trial can be watched here and a transcript here (it will take a few more days for the written judgement to be published at China Judgements Online).

[Background] 

In 2014, Dior applied for territorial extension of its 3D mark “J’adore bottle” (international registration No. 1221382, as shown below) to the Trademark Office of China (TMO). In 2015, the TMO rejected the application due to lack of distinctiveness. Dior then elevated the matter for review to the TRAB. The TRAB also sustained the refusal and issued decision No. [2016] 13584 (the No. 13584 Decision) holding the following key points: 

- The mark application is a graph of a bottle that could be easily regarded as a common sort of container used by the designated perfume products, instead of as a trade mark that indicating the source of products; and thus, the said 3D mark lacks distinctiveness to function as a trade mark; 

- The registration of Dior’s other similar trade marks do not necessarily determine the registration of the disputed mark -- the review should be on a case-by-case basis;

- The evidences submitted by Dior failed to prove the said mark had acquired sufficient distinctiveness through use, nor to prove it had established the sole correspondence relation with Dior among consumers. 

Dior then brought the TRAB (and the No. 13584 Decision) to courts, and was handed unfavourable decisions during the first and second instance proceedings. At last, retrial in front of the SPC. 

[The main disputes at the SPC] 

1) Procedural flaws in the No. 13584 Decision? 

Dior accused TRAB of procedural violation based on that the key feature of the mark had been obviously missed during the review procedure: the disputed mark had been mistakenly reviewed as a 2D graphic mark, disregarding the explicit information of “3D mark” contained in the application and in the public Madrid Monitor record. Evidence-wise, Dior emphasized the wordings of “graph/graphic” and “regular (mark)” used by TRAB in the No. 13584 Decision, where a more accurate description should have been in place. 

In response, Ms. Sun Mingjuan, one of the two representatives of TRAB (at that time, an examiner at TRAB), asserted that they were fully aware of the 3D feature during reviewing, and there was no such procedural violation, because in their intranet the types of marks were clearly marked and therefore was impossible for examiners to overlook. She explained that in the context of Chinese language, 2D and 3D could all be embraced into the set of “graph”, e.g. “2D graph” and “3D graph”; moreover, there was no strict standard over the title of marks written in the formal Decision, therefore, the accusation of procedural violation solely inferred from certain way of using words shall be considered groundless. 

Dior then referred to Article 8 of the PRC Trademark Law backing that there was no inclusion relation between the separate “graphs” and “3D symbols”: 

“Any signs, including words, graphs, letters, numbers, three-dimensional symbols, color combinations, sound or any combination thereof, that are capable of distinguishing the goods of a natural person, legal person or other organization from those of others may be applied for registration as trade marks.” 

To this Kat’s surprise, it seemed that the other representative of TRAB at this point suddenly gave up the battlefront and turned to a new direction. She cited Article 43 of the Regulations for the Implementation of the Trademark Law of the PRC trying to justify the “2D examination”: apparently, Dior had failed to submit the supplement document in due time. As a result, “there was nothing wrong with examining the application as a 2D mark”: 

“When applying for a territorial extension to the People’s Republic of China and requesting the protection of a three-dimensional sign, a combination of colours or sound as a trade mark, or the protection of a collective mark or a certification mark, the applicant shall submit the materials required by Article 13 (which “include at least a drawing of three-sided views”) of these Regulations through a trade mark agency established in accordance with law to the Trademark Office, within 3 months from the date on which the trade mark is recorded in the International Register at the International Bureau. Where no relevant materials are submitted within the said time limit, the Trademark Office shall refuse the application for territorial extension.” 

Dior then stressed the “Madrid nature” of this application, which required merely one-side-view drawing instead of the three-side view; moreover, the specific circulation system of documents where WIPO acted as an intermediate messenger was time-consuming, which gave Dior very little time to take actions. Lastly, the information of the key features regarding the said application was all published in Madrid Monitor, which could be easily accessed, no exception for TRAB.

2) Whether the disputed mark has acquired distinctiveness? 

Dior detailed the aesthetically pleasing and unique design of the J’adore bottle by Mr. Jean-Michel Othoniel, and claimed its distinctiveness as a trade mark. 

The TRAB held that, firstly, the aesthetics feature does not function as an indication of origin, but rather a merely a sort of decoration. And, not all the creative designs are eligible for trade mark registration. The bottle, as a common-seen container, is intrinsically non-distinctive for the designated products. Consumers have long been accustomed to see the glass-made containers of condiments and perfumes for hundreds of years. The evidence Dior has presented is in fact the combinations of the (naked) bottle and other specific indicators, e.g. the letters of “J’adore” at the cap or the voice-over in the advertisement video, which shows that the bottle is not used in a trade mark sense: ultimately, it is hard to say which part is playing the role of trade mark, the bottle, the text, or the combination? 

Dior threw out a heavyweight point that its Chinese registration (No. 7505828) of the identical 3D bottle was approved by TMO in 2009 in Class 3 (soap, cosmetic products, shampoo and essential oil), which should be sufficient to prove the distinctiveness issue in China. 

TRAB’s representative Ms. Sun held: "personally, I found the approval of registration strange and thus I reserve my opinion here. Nevertheless, the applications should be reviewed on a case-by-case basis, one former approval does not automatically lead to the second approval. Further, conferring trade mark rights to the basic and plain bottle is very likely to impede competition. At most, if needed, a 10-year protection of design rights would be more proper."

[This Kat: TMO’s public record shows that the registration of 2009 is actually a combination of bottle and letters of “J’adore” in the cap; whilst it hard to tell, as displayed by Dior in the court, whether the disputed application carries the same specific letters. It seems that it also has the lettering of "J'adore", if so, then it is not a "plain bottle" as observed by the TRAB... if not, then they are not of the "identical" cross references as claimed by Dior...]. 

Dior in 2009 vs. Dior in 2018

[The SPC’s ruling] 

1) On the first main dispute: 

On the tension between the territoriality and international obligation here, the SPC emphasized the primary objective of joining the Madrid System, which is to “provide a convenient and cost-effective solution for registering and managing trade marks worldwide.” Accordingly, the trade mark administrative authorities shall provide the applicants, including international applicants, with reasonable opportunity to make additions or corrections of equality and justice. In this case, both the TMO and TRAB had failed to handle the objections properly and to correct their erroneous acts in due course, which may impair the reasonable expectation interests of the administrative counterpart, which thereof is a violation of the procedural due process of law enforcement. 

2) On the second main dispute: 

The SPC noted that the TRAB shall re-examine the territorial extension application and take the following two factors into consideration: first, the intrinsic distinctiveness and acquired distinctiveness of the mark in dispute, together with the relevant evidences; secondly, the principle of consistency (in terms of the examination standard). The SPC have noticed the registration status in 2009 of the identical trade mark, it should be noticed that the principle of case-by-case review shall not be used as an excuse of neglecting the uniformity of law enforcement standards. 

In conclusion, the SPC ruled in favor of Dior, revoked the previous verdicts and ordered the TRAB to review the decision. 

[Comments] 

It sure is a significant case and has a guiding function. It provides clear solution or orientation for lower-level courts when they face similar circumstances where the choice has to be made between national laws and international obligations. Meanwhile, the trade mark examiners may have felt the press from the top court to do a better job which at least shall not be self-contradictory. 

Photos courtesy: 

- The one at the upper right corner: by Zheng Guogu;

- The rest figures of trade mark: from WIPO, TMO and the snapshot from the SPC trial.