Non-Traditional Marks in China: 3D, Colour and Sound

Introduction: marks that are not words or pictures

Most foreign brand owners register word marks, figurative marks, or a combination of the two. Chinese law permits considerably more: a trademark may consist of words, devices, letters, numerals, three-dimensional signs, colour combinations, sound, or any combination of those elements.

The non-traditional categories — 3D marks, colour combinations and sound marks — are available to foreign applicants, and they are under-used. They are also more heavily conditioned than the conventional categories, and a filing that does not respect the conditions will be corrected or refused. This article deals with the requirements for each.

A threshold distinction: what makes a mark registrable at all

Before the formalities, the substantive point. A three-dimensional sign, a colour combination or a sound is registrable only where it is distinctive — that is, capable of distinguishing the applicant's goods or services from those of others.

A shape that is dictated by the nature of the goods, a shape necessary to obtain a technical result, and a shape that gives substantial value to the goods are not registrable. A colour combination that is not distinctive of the applicant in relation to the goods is not registrable. A sound must be capable of functioning as a mark, which not all sounds are.

This is where most non-traditional applications fail, and it is a matter of evidence and argument rather than of forms. An applicant should be prepared to show that the mark has acquired distinctiveness through use, or that it is inherently distinctive in the relevant market.

Three-dimensional marks

A three-dimensional mark, often described as a shape mark, is applied for by selecting the three-dimensional option in the declaration section of the application, describing the manner of use of the mark in the mark description field, and printing or affixing one representation of the mark in the representation box.

The requirements for the representation are specific:

It must be capable of establishing the three-dimensional shape.
It must contain at least three views — for example front, side, top and bottom views.
The views submitted must relate to the same three-dimensional mark.
The whole representation containing the multiple views must be no larger than 10 x 10 cm and no smaller than 5 x 5 cm.
Where the three-dimensional mark contains text, the text must appear in the correct position within the shape views and must not sit outside them.

That last requirement is one that foreign applicants often miss. A word element presented separately from the shape, rather than located on the shape itself, will be corrected.

Colour combination marks

A colour combination mark consists of two or more colours, and its constituent element is colour. It is a distinct category from a mark filed in colour, and confusing the two is the most common error in this area.

To apply for a colour combination mark, select the colour combination option in the declaration section, list the colour names and colour numbers in the mark description field together with an explanation of the manner of use, and affix one coloured representation in the representation box.

Two further requirements apply to the representation. It must be either colour blocks showing the combination, or a graphic outline showing the positions where the colours are used. Where the outline approach is taken, the outline is not part of the mark and must be shown in dashed lines, not solid lines.

There is also a practical formality. Where a colour combination or a coloured representation is filed, a black-and-white version is required as well. That black-and-white version must be separately made — it may not simply be a photocopy of the coloured original. It need not be filed with the application, but the office may require it during examination.

Marks filed in colour, as opposed to colour combination marks

This is the distinction that causes most of the trouble, and it is worth stating separately.

A mark specified in colour is a mark whose representation is coloured text, a coloured device, or a coloured combination. It is not a colour combination mark. To file it, do not select the colour combination option; simply affix one coloured representation.

No declaration is required. The distinction matters because the two categories are examined differently, and because a colour combination mark is claiming the colours themselves as the mark, whereas a mark specified in colour is claiming the mark as shown in those colours.

Sound marks

A sound mark is applied for by describing the sound intended for use as the mark, using staff notation or numbered musical notation, together with a written description. Where the sound cannot be described in notation, a written description alone is used. The written description and the sound sample must be consistent with each other.

The consistency requirement is where applications fail. A description that does not match the audio file, or that is too vague to identify the sound, will be corrected or objected to.

A common requirement across all three

Where a three-dimensional or sound sign is applied for, the manner of use must be stated. Where a colour combination is applied for, the colour names, colour numbers and the manner of use must be stated.

The mark description field is where this goes. It is also where the meaning of any foreign text in the mark should be explained. Applicants who leave the description field blank or vague invite a correction notice, and the correction will consume part of the application window.

Frequently asked questions

Can I register a shape, a colour combination or a sound as a Chinese trademark?

Yes. A Chinese trademark may consist of words, devices, letters, numerals, three-dimensional signs, colour combinations, sound, or a combination of those elements, provided the sign is distinctive.

What is the difference between a colour combination mark and a mark specified in colour?

A colour combination mark claims two or more colours as the mark itself and requires a declaration, colour names, colour numbers and a statement of use. A mark specified in colour is simply a mark whose representation is coloured, and requires no declaration.

How many views must a three-dimensional mark have?

At least three views, for example front, side, top and bottom views. They must relate to the same mark, and the whole representation must be between 5 x 5 cm and 10 x 10 cm.

Where does text go in a three-dimensional mark?

Within the shape views, in the correct position on the shape. Text presented separately from the three-dimensional shape, outside the views, will be corrected.

Why must a colour combination representation use dashed lines?

Because the outline shows where the colours are used but is not itself part of the mark. It must therefore be shown in dashed lines. A solid-line outline would be read as part of the claimed mark.

How is a sound mark described?

Using staff notation or numbered musical notation together with a written description, or by written description alone where notation is not possible. The description must be consistent with the sound sample submitted.

Do I need a black-and-white version of my coloured mark?

Where a colour combination or a coloured representation is filed, a black-and-white version is required and must be separately made, not a photocopy. It need not accompany the application, but the office may request it during examination.