Supreme People's Court Sides with Dior: J'adore Trademark Registration

*** The writing does not, and is not intended to, constitute legal advice by any means***

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In an earliest post, I noted that trademark registration extends to product packaging under trade dress in the United States. Dior has been trying to register a trademark for its J'adore bottle in China, presumably because knock-offs are widely circulated in the market. Intellectual property (IP) protections are territorial, meaning the applicable law is law of the land in which a product or service is rendered. If you are an international fashion house, like Dior, you should therefore register a trademark in respective country, unless there is a multilateral agreement. For example, in the case of copyright, the signatories to the Berne Convention affords to one another copyright protection. Just like you would go to United States Patent and Trademark Office (USPTO) for trademark registration in the U.S., in China, you should file an application to China Trademark Office (CTO). Upon the filing of application, CTO, however, rejected Dior's application. Dior, of course, did not give up. It went on to appeal the decision to Trademark Review and Adjudication Board (TRAB), the Chinese counterpart of Trademark Trial Appeal Board (TTAB). TRAB, upon review, affirmed the CTO decision, citing that it failed to arrive at a conclusion that J'adore can be seen as a distinctive source identifier based on the evidence Dior submitted.

The Chinese standards that govern trademark registration eligibility are, more or less, the same with the U.S. ones. Dior has to demonstrate that the J'adore bottle acquired a secondary meaning in the Chinese market as a source identifier. The image of the bottle should conjure up in the minds of Chinese consumers Dior. TRAB essentially rejected the application on the grounds that the J'adore bottle has not attained the necessary level of distinctiveness in the market, referring the fragrance bottle as a "container" as if it were purely practical. Dior was unrelenting in its effort, appealing the decision all the way to Supreme People's Court, the Chinese equivalent of Supreme Court of the United States. SPC sided with Dior and remanded the case back to TRAB, directing it to review Dior's application anew, specifically in connection with whether J'adore acquired the secondary meaning in the Chinese market.

This should not necessarily come as a surprise to skeptics who think that China is not doing its best to ratchet up its intellectual property system to a level that matches the country's international economic prowess. In practice, if you are an IP-net-exporting country, you'd want a strong IP protection worldwide. (If you are an IP-net-importing country, the converse holds true.) Over the years, China has been making a rapid transition from a IP-net-importing country to a IP-net-exporting one. So, the Chinese government has issued a string of directives to forge strong IP laws, although several of them are being accused of being tinged with protectionist instincts. It is laudable that China is making a progress both effectively and rapidly to fine-tune its IP laws. SPC's recent ruling attests to the same level of commitment the Chinese judiciary makes to bring substance to that progress. Also, another lesson for lawyers: never give up if you believe that your client's goal is just and if that's what the client wants.