CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
Trade dress protection in China falls primarily under Article 7 of the Anti-Unfair Competition Law. This pro- vision prohibits the unauthorised use of packaging or decoration that belongs to another party and has acquired a certain level of market recognition. Aspects of Product Appearance That Can Be Protected Protectable trade dress includes any element of prod- uct presentation that serves as a source identifier. This can cover product shapes, container configurations, packaging designs, colour combinations, patterns, the arrangement of words, and the overall look cre- ated by combining these elements. 4.2 Requirements for Protection Requirement for Protection For industrial design, its registration and protection are regulated under Patent Law, which requires: • Industrial Applicability: The design must be capa- ble of being reproduced in industrial production. • Novelty. • Distinctive Character/Individual Character: The design must have obvious differences compared to any prior design or combination of prior design features. • Non-Functionality. • Legality: The design must not conflict with prior legitimate rights such as prior trade marks, copy- rights, etc, and must not violate laws or social eth- ics (public order and good morals). • Clarity: The design has been clearly shown with the drawings filed. For trade dress to be protected, it must have become influential among relevant consumers through actual use in the Chinese market. This means the packaging or decoration has been used continuously and exten- sively, so that the public associates it with a specific product/service provider. No registration is required, but the right-holder must provide evidence of use, advertising expenditure, market share, awards, or any other proof of reputation. Unregistered Rights For industrial design, China follows a strict registra- tion system. There is no unregistered design patent
right. Protection depends upon the grant of the design patent. For trade dress, rights may arise automatically from commercial use, not from registration. As long as the packaging or decoration has gained a certain level of influence through actual use, an enforceable right exists under the Anti‑Unfair Competition Law. 4.3 Registration and Term Industrial Designs Procedures for registering industrial design include fil- ing, formality examination, grant, registration, publica- tion and paying annuities for maintenance. Costs for registering industrial designs include an offi- cial fee of CNY1,305 and an attorney fee of several thousand CNY, which varies firm-by-firm. The duration of protection is 15 years, with annui- ties required to be paid for maintenance, but with no renewals. 4.4 Enforcement and Remedies What Constitutes Infringement For industrial design, acts constituting infringement include “manufacturing, offering for sale, selling, or importing products incorporating the patented design without authorisation”. “Using” is not an infringing act of industrial design patent rights in China. Design infringement requires (i) the same or simi- lar category of products and (ii) the same or similar design. The assessment of infringement follows the “overall observation, comprehensive judgement” rule. For trade dress, infringement occurs when a per- son, without permission, uses packaging or decora- tion that is identical or similar to another’s influential trade dress on the same or similar goods, causing consumer confusion as to source. The test focuses on the overall visual impression – even without exact copying, if the look is sufficiently similar to mislead buyers, infringement exists.
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