2D and 3D TM Use Guideline

Whether the Use of the Two-dimensional Trademark in a Three-dimensional Form could be deemed as the Use of the Trademark

Part 1

Co-Author:  Mamie Mai, Joffy Li

A two-dimensional trademark is a trademark that is made up of words, devices, marks, or their combination and is only visible on one plane or the vision. In general, the use of a trademark for a commodity means that the trademark is attached to the commodity, thereby physically separating the commodity from the trademark. And if a third party uses another person’s two-dimensional trademark on the product’s appearance in three-dimensional form, does that constitute the use of a trademark?

In the case of ALL STARC. V. Vs. Beijing Fu Yuan NuoCheng Trading Co., Ltd. over trademark infringement in 2017, the Plaintiff, ALL STAR C.V., the legal holder of the CONVERSE brand and trademark owner of No. 7182194 for “” in China, found that the Defendant had sold and promoted shoe products similar to the Plaintiff’s registered trademark No.7182194 at its Tmall online store, which violated the Plaintiff’s exclusive trademark rights.

With regard to this case, the Judge interpreted one of the issues on whether the use of a two-dimensional trademark on the product’s appearance in three-dimensional form was the use of a trademark.

A trademark is a mark used by a provider of goods or services to distinguish their goods or services from the same or similar goods or services provided by others, i.e., a trademark is a symbol that identifies and distinguishes the source of goods. According to Article 8 of the Trademark Law, the provision stipulates that any sign capable of distinguishing the goods of a natural person, a legal person, or any other organization from those of others, including but not limited to word, design, letter, numeral, three-dimensional symbol, a combination of colors, and sound, as well as a combination of the above, may serve as a trademark for registration application, which emphasizes the function that can “distinguish the goods from others”.

The value of a trademark is reflected in the function of distinguishing and identifying the goods or services. Thus, a trademark is a symbol that indicates the source of goods or services and serves to distinguish them from each other. The “symbol” should be the sum of the three-dimensional structure of its can refer to, refers to and object, i.e., it should make the relevant public perceive a “symbol” visually to produce the association of the corresponding goods or services. The ultimate value of a trademark originates from commercial activities, so the trademark should not be understood as a mere “attachment”, but rather as a function of the identification source of the trademark as a symbol protected by law.

Secondly, in cases where it is difficult to physically separate a trademark mark from the goods, the use of a mark shall be deemed to be trademark use on the basis that the source of the goods can be identified. According to Article 48 of the Trademark Law, “the use of a trademark” means using a trademark on goods, on the packages or containers of goods, in the trade documents of goods, or for advertisements, exhibitions, and other commercial activities for the purpose of identifying the origin of goods. The “use” referred to in this paragraph limits the use of the mark to “use in” the goods, rather than requiring physical separation, so that use of the mark is not contingent upon physical separation of the mark from the goods. When a two-dimensional trademark is used in a three-dimensional manner on certain goods, it essentially presents the two-dimensional shape, main elements, and combinations contained in the trademark on the goods, without changing the trademark itself or the function of identifying the source from which the trademark is derived. The functional value of identifying the source carried by the trademark extends to the goods covered by the trademark so that consumers can naturally associate the source of the goods or services when purchasing related goods or enjoying related services, thus realizing the purpose of “the use of the trademark” as specified in the above-mentioned articles. And the use of the trademark shall be subject to the function of identifying the source of the goods or services. As the functional value of the trademark can be realized, even if it seems impossible to physically distinguish the trademark mark from the goods, it will not affect the judgment on the “use of the trademark”.

Thirdly, the subjective intention of the trademark user is to bring into play the identification function of the trademark. It should be judged from the trademark user has the intention to use the mark as a trademark, which actively embodies the function of identifying the source of the mark and has the ability to exert the function of identifying the source of the mark and distinguishing goods or services. If, on the other hand, a mark is used by the user for general functional or aesthetic purposes only, where it is difficult for the relevant public to know the source of the goods or services, or to reflect the trademark function of the mark, shall not be considered as the “use of the trademark”.

Fourth, the relevant public perceives the use of the mark as the “use of the trademark”. Where the public concerned is able to associate a mark with goods or services and their sources, the use of the mark in such a way that the mark, the goods or services, and the source of the goods or services are organically connected, thus playing a functional role as a trademark, and such use could be deemed as the “use of the trademark”.

Finally, the legitimate use of the trademark is excluded. In determining the “use of the trademark”, the legitimate use of the trademark shall also be excluded, including the following specific cases: 1) indicative use refers to the use of another person’s trademark on goods or services in commercial activities in order to illustrate the relevant true information; 2) descriptive use, which is the common name, figure or model of the goods contained in a registered trademark, or the direct representation of the goods, as stipulated in the Trademark Law. The owner of the exclusive right to use a registered trademark shall not be entitled to prohibit the proper use by others of the quality, main raw materials, function, application, weight, quantity, and other characteristics of the goods, or the geographical names contained therein, and the owner of the exclusive right to use a registered trademark shall not be entitled to prohibit the proper use by others of the shape resulting from the nature of the goods themselves, the shape of the goods necessary to obtain the technical effect or the shape which gives substantial value to the goods contained in a registered three-dimensional trademark. 3) Other legitimate uses. The aforementioned use of a trademark reflects the functional value of the trademark, so the subjective intent of the legitimate user should be “legitimate”, rather than reflecting the functional value of the trademark.

In summary, whether the use of the two-dimensional trademark in a three-dimensional manner on the goods is the “use of the trademark” should be considered from the functional value of the trademark, combined with the subjective intent of the trademark user as well as the relevant public cognition, but also should exclude the legitimate use of the trademark.

to be continued on a future publication…