Trademarks, pretty things and fair competition.

Trademarks, pretty things and fair competition.

The issue of aesthetic functionality came up in a recent project, therefore it seems fitting to discuss it.

In the USA there is something called the functionality doctrine, which protects specific features of products by way of trademark laws. This idea is a balancing act that some American Courts must perform when certain situations arise.

An example of a case where the functionality doctrine arose was the Louboutin case. The essential facts of said case were:

Could you imagine if someone was able to register a single colour as their trademark? The results would not be good for the world at large, as the trademark holder in question, would be the only person who could use the colour. Therefore, the courts apply a stringent test or two before giving such trademarks protection. These tests form part of the functionality doctrine.

The functionality doctrine has two main branches:

  1. Utilitarian functionality; and
  2. Aesthetic functionality.

Utilitarian functionality means that if a feature of a trademark has a particular practical use, other than identifying the maker, and/or it puts other businesses at a disadvantage in competing, it cannot be protected by trademark laws.

Aesthetic functionality means that if a feature of a trademark can be used generally to make things pretty (to attract consumers), it doesn’t identify the maker, and/or it puts other businesses at a disadvantage in competing, it cannot be protected by trademark laws.

Now let’s look at the situation in China, which is regulated by Trademark Law of the People’s Republic of China:

Article 11 The following signs shall not be registered as trademarks:

(1) those only comprising generic names, designs or models of the goods in respect of which the trademarks are used;

(2) those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used; and

(3) those lacking distinctive features.

The signs under the preceding paragraphs may be registered as trademarks where they have acquired the distinctive features through use and become readily identifiable.

Article 12 Where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered.

Article 14 Account shall be taken of the fol1owing factors in establishment of a well-known mark:

(l) reputation of the mark to the relevant public;

(2) time for continued use of the mark;

(3) consecutive time, extent and geographical area of advertisement of the mark;

(4) records of protection of the mark as a well-known mark; and

(5) any other factors relevant to the reputation of the mark.

I seems to the writer that red soles could be capable of trademark protection in China under Article 11 above. However, this would be subject to Articles 12 and 14, and of course the judiciary. In this situation, what can be protected in the US, can also be protected in China.

In summary, trademarks cannot be used as patents, nor can they be used to stop designers making beautiful designs. However, if a distinctive feature of a product can be used to identify the maker, that feature may be capable of trademark protection.

Published by Christopher Fung on November 25th, 2015 tagged China News

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