Trade dress, a well-established concept in the U.S., operates differently in China. Unlike in the U.S., where trade dress is recognized as a standalone intellectual property (IP) right, China does not offer independent trade dress protection. Instead, the protection of a product’s shape and appearance is governed by several distinct IP laws, each with its own set of requirements and challenges.
Key Avenues for Protecting Trade Dress in China:
1. Design Patent under the Patent Law
This protection is available for novel designs related to a product’s shape, pattern, or a combination thereof. A design patent can offer robust protection, but the design must be genuinely new and not previously disclosed.
2. 3D Trademark Registration under the Trademark Law
Three-dimensional shapes can be registered as trademarks in China. However, achieving registration requires that the shape be distinctive enough to differentiate one product from another. The distinctiveness threshold is high, and proving that a 3D shape functions as a trademark can be challenging.
3. Practical Works of Art under the Copyright Law
This form of protection applies to original works of art that are practically used, such as artistic designs incorporated into products. The work must be creative and original to qualify for copyright protection, adding another layer of complexity to trade dress claims.
4. Product Packaging and Decoration under the Anti-Unfair Competition Law
This law protects distinctive packaging and decoration from being imitated by competitors. To succeed under this law, a brand must prove that its packaging or decoration is well-known and distinctive within China, which often requires substantial evidence of local use and recognition.
Challenges for Western Brands:
Western brands often face significant hurdles when trying to claim trade dress protection in China. The process involves proving the originality of their designs and meeting the strict requirements of distinctiveness. Moreover, brands must demonstrate extensive use and recognition of their trade dress within mainland China, not just internationally or in the U.S.
The burden of proof is substantial, making the journey to securing trade dress protection in China a demanding one. However, with the right approach and strategic planning, it is not impossible.
If you have further questions about protecting your trade dress in China, our team at Eligon IP is here to help. Feel free to reach out to us at hello@eligonip.com
