Case Example On Review And Adjudication and further litigation Against Refusal Of 3-Dimentionsal Trademark Registration For "Fanta"

The Coca Cola Company, whose application for registration for "Fanta" beverage bottle as a three-dimensional trademark was rejected, sued the Trademark Review & Adjudication Board (TRAB) at the Beijing First Intermediate People's Court.

Recently, the court made the first instance decision judging that the “Fanta” beverage bottle is basically the same to an ordinary bottle in overall design, there are no substantive differences in visual impression, and not distinctive enough. Accordingly, Coca-Cola was sentenced to lose the lawsuit, and the refusal decision by TRAB was sustained.

It is reported that the main feature of “Fanta” beverage bottle is that it has serried surrounding ribs at the lower part of the bottle body. The Coca Cola Company believes that the lower part of the bottle body is always regarded as the principal portion in visual recognition as well as the main contact spot by consumers. This kind of bottle is specially designed for filling of “Fanta” beverage, and can be distinguishable from other ordinary bottles. Moreover, the bottle has been accepted for registration as a three-dimensional trademark in many other countries, which proves sufficient distinctiveness, so the TRAB should allow the registration.

However, TRAB insisted the reason that the “Fanta” beverage bottle design is relatively simple, lack of distinctiveness and cannot be easily distinguishable from other ordinary beverage bottles. It does not create distinctive features sufficiently distinguishable from other ordinary bottle shapes, it lacks distinctiveness in its entirety.

On November 28, 2005, the Beijing First Intermediate People's Court held a public hearing on this case and made the above judgment.

In the substantive examination of an application for a three-dimensional mark, it usually becomes the focus whether the mark itself is distinctive. Pursuant to Article 12 of the Chinese Trademark Law, where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods feature itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered. It can be seen from the aforementioned “Fanta” beverage bottle case that, same as a plain trademark, when a three-dimensional sign is to be registered as a trademark, it must also meet the requirements of "with distinctive feature and easy to be distinguished" set forth in the Trademark Law. Not all signs or figures having a three-dimensional appeal can be registered as a three-dimensional mark, otherwise, other producers and distributors in the similar business will be excluded from manufacturing or selling goods in a similar shape, and it is obviously unfair to these producers and distributors. The designing of the “Fanta” beverage bottle, to which application for three-dimensional mark was filed, was for a certain technical purpose, instead of distinguishing it from other products, therefore, it is not possess the function as a trademark. In this instance, we take the view that owners of three-dimensional marks can take the following two measures to protect its/his three-dimensional designs: 1) to add other distinctive elements to the three-dimensional mark to make it distinctive in its entirety; or 2) to have the design protected other than trademark, for example utility model patent or design patent.

(Adapted from article in China Court website)