I. Introduction: Beyond the Flat – The Evolution of Trademarks

The world of branding is no longer confined to two dimensions. While words, logos, and their combinations have long served as the cornerstone of trademark protection, the competitive marketplace has driven brand owners to seek more distinctive and immersive ways to capture consumer attention. This has led to the increasing importance and recognition of three-dimensional (3D) trademarks.  A 3D trademark, also known as a shape or form mark, protects the distinctive shape of the product itself or its packaging. Unlike a conventional label, the source-identifying function is embodied in the physical form.

China, aligning with international standards under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), has recognized 3D signs as protectable trademark subject matter. The 2013 amendment to the Trademark Law of the People's Republic of China explicitly listed "three-dimensional signs" as a registrable element for the first time, providing a clearer statutory basis. This article explores the concept, registrability thresholds, inherent risks, and strategic considerations for 3D trademarks in China, offering a practical guide for rights holders navigating this complex yet valuable territory.

II. Concept and Types of 3D Trademarks

A 3D trademark refers to a sign consisting of a three-dimensional shape, or containing such a shape, which can distinguish the goods or services of one entity from those of others. Under China law and practice, 3D trademarks generally fall into two primary categories, as outlined in the Guidelines for Trademark Examination and Trial:

1. The Shape of the Goods Themselves: This protects the distinctive three-dimensional configuration of a product. The shape becomes the brand identifier. Classic international examples include the iconic contour of the Coca-Cola bottle or the shape of the Zippo lighter.

2. The Shape of Goods' Packaging (or "Get-up"): This protects the distinctive three-dimensional form of a container, wrapper, or other packaging in which goods are presented. The package itself functions as a trademark. The most cited global example in this category is the Ferrero Rocher chocolate packaging. The golden, spherical, pleated wrapper with a white label in a transparent container is a masterclass in building distinctiveness through shape. While the registration journey for this specific shape in China was protracted and faced initial refusals, it is the quintessential case study for demonstrating acquired distinctiveness (discussed later).

3. A Third, Rare Type: The "Position Mark": While not purely a 3D trademark, China has also accepted, in principle, the registration of "position marks," which define the specific placement of a two-dimensional element on a three-dimensional object (e.g., a stripe along the side of a sneaker). This further demonstrates the system's evolving understanding of non-traditional marks in a spatial context.

III. The High Bar: Criteria for Registrability of 3D Trademarks

Registering a 3D trademark in China is significantly more challenging than registering a conventional word or device mark. The applicant must successfully overcome two major legal hurdles: non-functionality and distinctiveness.

A. The Absolute Barrier: The Non-Functionality Doctrine (Article 12)

Article 12 of the China Trademark Law is the primary gatekeeper. It stipulates that a 3D sign shall not be registered if the shape is:

• Resulting solely from the nature of the goods themselves. A standard shape inherent to the product category cannot be monopolized. For example, a spherical shape for a ball, or a circular shape for a tire, cannot be registered.

• Dictated by the need to achieve a technical effect. Shapes that are primarily functional, providing a technical or practical advantage (e.g., making the product work better, cheaper, or easier to manufacture), are barred. This principle prevents perpetual trademark protection from circumventing the limited-term monopoly of a patent.

• Giving substantial value to the goods. This targets shapes that are primarily aesthetic or decorative. If the essential appeal of the product to consumers lies in its beautiful or ornamental shape, that shape belongs to the public domain of design, not to proprietary trademark rights. An elaborately carved crystal vase might be denied registration under this clause.

B. The Core Requirement: Distinctiveness (Articles 8 & 9)

Even if a shape passes the non-functionality test, it must still fulfill the fundamental trademark requirement of distinctiveness—the ability to identify the commercial source and distinguish the applicant's goods or services from others.

• Inherent Distinctiveness is Rare: Most product or packaging shapes are not inherently perceived by the relevant public as a "trademark" (a "badge of origin"). They are seen as the product or its container. A unique bottle shape may be seen as attractive packaging, not necessarily as an indicator of a specific manufacturer. Therefore, most 3D marks are initially deemed lacking in inherent distinctiveness.

• Acquired Distinctiveness (Secondary Meaning) is Key: This is the most critical and common path to registration. An applicant can overcome a lack of inherent distinctiveness by proving that, through extensive and exclusive use, promotion, and market recognition, the shape has acquired distinctiveness and has become a source-identifier in the minds of consumers. The Ferrero Rocher case is pivotal here. The China National Intellectual Property Administration (CNIPA) and the courts ultimately accepted that the specific packaging shape, through long-term, massive, and exclusive use in China, had become uniquely associated with Ferrero in the chocolate market. Consumers seeing that particular golden sphere in a transparent box would identify it as a Ferrero product. Evidence required includes:

  ◦ Duration, extent, and geographical scope of use.

  ◦ Massive investment in advertising and promotion featuring the shape.

  ◦ Market share and sales figures.

  ◦ Survey reports or awards showing public recognition.

  ◦ Media coverage or third-party publications linking the shape to the applicant.

IV. Navigating the Risks: Challenges in Registration and Enforcement

Pursuing a 3D trademark in China involves navigating a landscape filled with procedural and substantive risks.

• High Burden of Proof for Acquired Distinctiveness: The evidentiary standard is stringent. General sales and advertising data are often insufficient. Applicants must provide concrete, China-specific evidence demonstrating that the relevant Chinese public recognizes the shape as a trademark. This often requires years of market presence before an application can succeed.

• Subjective and Inconsistent Examination: The assessment of "aesthetic functionality" or when a shape transitions from being merely decorative to a source-identifier can be highly subjective, leading to unpredictability and potential inconsistency in examination decisions.

• Prolonged and Costly Registration Process: Given the high likelihood of initial refusal, the path to registration typically involves complex administrative review procedures (with CNIPA), followed by potential appeals to the Beijing Intellectual Property Court and the Beijing High People's Court. This process is time-consuming (often taking 5-8 years or more) and expensive in terms of legal and evidentiary costs.

• Enforcement Difficulties: Even after registration, enforcing a 3D trademark is challenging. Proving infringement requires demonstrating that the accused shape is similar and causes a likelihood of confusion. For 3D marks, determining "similarity" is complex—is it based on the overall visual impression, or a detailed comparison? Judges may be less accustomed to analyzing shape confusion than word/logo confusion. Furthermore, an infringer may successfully challenge the validity of the 3D mark, re-arguing functionality or lack of distinctiveness.

• Vulnerability to Non-Use Cancellation: Like all trademarks in China, a 3D mark becomes vulnerable to cancellation if not put to genuine commercial use for three consecutive years. For shapes that are not the primary brand identifier, maintaining proof of "trademark use" of the shape itself (not just the word mark on it) can be a challenge.

V. Strategic Considerations and Practical Advice

Despite the hurdles, a registered 3D trademark offers powerful, potentially perpetual protection for a core brand asset. Strategic considerations include:

1. Conduct a Pre-Filing Audit: Rigorously assess the shape against Article 12. Is it functional or merely ornamental?

2. Build a Robust Evidentiary Dossier for Acquired Distinctiveness: Before filing, systematically gather evidence of use in China. This includes advertising that highlights the shape, promotional materials, in-store displays, media recognition, and consumer surveys.

3. Consider a Multi-Layer Filing Strategy: Often, the most effective approach is to file for: a) the primary word/logo mark; b) the 3D shape mark; and c) a combination mark (logo on the shape). This creates a layered protection network.

4. File Early, But Be Prepared for a Marathon: Consider filing the application even while distinctiveness is being acquired, as the filing date is critical. Manage expectations regarding the lengthy process.

5. Use It as a Trademark: In commerce and advertising, actively promote and present the shape as a brand.  Before registration, use the "™" symbol, and after registration, switch to using the "®" symbol.

6. Enforcement Strategy: In enforcement actions, focus on clear cases of slavish imitation designed to cause confusion. Consider combining trademark claims with claims for unfair competition under the Anti-Unfair Competition Law, which can offer broader protection against acts of confusion.

VI. Conclusion

The recognition of 3D trademarks under China law represents a significant evolution in intellectual property protection, acknowledging that brand identity can be embodied in form as much as in name or symbol. However, the path to securing and enforcing such rights is a demanding one, defined by the strict doctrines of non-functionality and the high bar of acquired distinctiveness. The Ferrero Rocher saga, while ultimately successful, underscores the need for long-term commitment, substantial investment, and strategic evidence gathering.

For brand owners with a truly distinctive and non-functional product shape or packaging that has become central to their brand identity, the pursuit of a 3D trademark in China, despite its risks, can secure a formidable and unique competitive advantage. It transforms a physical form from a mere container or product into a legally protected, invaluable brand asset in the world's most dynamic market. Success lies in careful pre-filing analysis, patient and evidence-based prosecution, and strategic, multi-faceted brand management.