The Effect of the Functionality of Commodity and Its Packaging on the Protection of Trademarks

In our usual impression, a trademark seems to be only a visually perceptible flat trademark. The provisions of the current Chinese trademark law concerning “the use of text, graphics, or combinations of trademarks, should have distinctive features to facilitate identification” have always been understood as Only include flat text and graphics. But with respect to Rolls-Royce's Drifter, McDonald's Ronald McDonald clown, and Haier's double prince, we obviously can't deny that they are just because they reflect two-dimensional planes in a three-dimensional form. With the distinctive features of the logo for easy identification. In fact, they are even more significant than flat logos. On the contrary, if we refuse to protect such three-dimensional trademarks, it is tantamount to encouraging people to use three-dimensional stereotypes to infringe two-dimensional plane marks.

It should be said that people have no particular difficulty in understanding and accepting this type of three-dimensional trademark. The real difficulty lies in whether we further allow the use of trademarks that are difficult to separate from merchandise and the appearance of its packaging. Because the trademark as a mark to identify the origin of goods, in our impression, obviously can only be the goods outside the goods, and can not be confused with the goods themselves. The appearance of a product package, especially the shape of the product itself, is so closely related to the product that it is considered difficult to play the role of a trademark from the outset. For example, Coca-Cola's curved glass bottle was rejected when it was registered in the United Kingdom in 1986. However, the above reasons do not seem to stand up to rigorous scrutiny, because people trying to break through this idea can not help but ask, since the appearance of a person's appearance is the same as the person's name can be used to identify the role of people, why the shape of the product and its packaging is not Can be used to identify the role of goods like other signs of the product? 7 Is the shape of the triangle TOBLEONE Swiss chocolate appearance and special shape of the packaging of goods is not more eye-catching than the word mark? In fact, there are indeed many countries and regions in the trademark Legislation clearly states the legal status of three-dimensional trademarks. For example, the aforementioned Coca-Cola glass bottles were registered in the United States as early as 1960. The appearance of some unique buildings is also protected as a three-dimensional trademark in the United States. The French trademark law of 1964 also allowed the registration of three-dimensional trademarks, and a large number of perfume bottles and bottles were therefore protected by law. Article 2 of the First Directive of the European Union concerning Trademark Legislation formulated by the European Community in 1988 lists, in particular, the appearance of goods and their packaging when enumerating the marks that can constitute trademarks.

The TRIPS Agreement requires members to protect various visually-visible trademarks, including three-dimensional trademarks. Therefore, with the signing of the TRIPS Agreement and the subsequent revision of the Trademark Law of China, one of the pressing issues we are facing is no longer Instead of protecting all three-dimensional trademarks, it should refuse to protect which three-dimensional trademarks, in particular, the refusal to protect which goods and their appearance.

U.S. utility function

In the past, since goods and flat labels could be separated from each other, the same trademark could have multiple combinations with different kinds of goods. The so-called right of exclusive use of trademarks was only one or several of them possible, but it could not be blocked on all goods. Others use, that is to say, although trademark protection can be continued through unlimited renewals, it is still a kind of weak protection in essence, and trademark right is only a limited right.

This limited right is embodied in the fact that, on the one hand, the generic graphics and names of goods that everyone needs to use are prohibited from being used as trademarks; on the other hand, according to the principle of exclusive protection of trademark protection, even a term that is obviously in the public domain or The graphic is selected as a trademark. For example, if you choose “Great Wall” as the trademark of wine, the protection of the trademark can only be limited to this specific commodity, and it must not interfere with the independence of the mark (“Great Wall”) that constitutes a trademark. Use or use on other goods (such as computers). However, in the case of three-dimensional trademarks and goods can not be separated, it will make limited rights evolve into unlimited rights, resulting in a monopoly of the mark itself: trademark protection of perfume bottles or wine bottles and other packaging, theoretically speaking It does not seem to exclude others from using it to hold liquids such as beverages or even disinfectants. Triangle-shaped chocolate does not prevent others from making other products of this form, but in fact it is often difficult to have a particular shape with the package and the product itself. Separation. Once someone is allowed to monopolize the appearance of a product or its package, other people will not be able to use the form on the product, resulting in a de facto monopoly on the form. As early as 1961, the predecessor Customs and the Patent Appeals Court (CCPA) of the Federal Circuit Court of Appeals in the United States realized the seriousness of the problem in the case of the DEISTER trial. In its opinion, “For some forms, the court should not The meaning of the two reasons is to create a monopoly.The real reason for this is not to say that these forms can not distinguish the source, but because of the overwhelming public policy of preventing monopoly and protecting public copying rights.A certain degree of confusion may even help the public to enjoy The benefits of free competition.” Therefore, the United States not only refused to protect functional “trade appearances” in long-term judicial practice, but also explicitly required that applicants for commercial appearance protection be required to modify the Lanham Act in 1998. Prove that the appearance is non-functional. However, it is necessary to recognize how to determine specifically whether the shape of the product and its packaging to be protected is functional. In particular, whether or not the shape is the main part of the expired patent directly recognizes its functionality and remains a far-reaching world problem. . Because the principle of patent protection is that a good technology solution should naturally be given to the public for free after a period of monopoly. The long-awaited non-gratis use right of the public should not be determined by the existence of other technical solutions with equal effectiveness. Nor should it depend on whether the shape is distinctive or not. And by whatever means, including three-dimensional trademarks, if the patentee can continue to monopolize patents that have expired, the so-called validity period will be a joke for the public.

However, the United States Circuit Court of Appeals did not reach an agreement on the above issue. The United States Court of Appeals for the 10th Circuit in the VORNADO case claimed the protection of the fan's spiral fence profile as a key part of the expired patents and refused protection directly, while the United States Federal Circuit In the case of MIDWEST, the Court of Appeals (CAFC) held that patent protection and trademark protection are independent of each other, and cannot simply be based on the fact that the expired patented form is functional, but whether the protection of the trademark will significantly hinder competition should be judged to be functional. In this case, the Federal Circuit Court of Appeals held that even if the trailer's arc-shaped hook is considered to have certain function in expired patents, as long as the defendant is prohibited from using it, it will not "make it fall into an unfavorable situation unrelated to credit" or " Obviously limiting its market competitiveness will not constitute an obstacle to protection.

The case that the Supreme Court of the United States Supreme Court upheld the company’s case in March of this year and lodged a complaint with the Truth Products Corporation finally made a relatively clear answer to this question. In the case of the case, MDI invented a windproof traffic sign seat with a spring in 1972 and obtained a patent. The key part of the patent consists of two springs. The principle of wind protection is to help The elasticity of the spring allows the traffic sign to bend smoothly when the wind is strong, and it can automatically return to normal when the wind is weakened. (See Fig. 1) After the patent expired, Traffix also started to produce the same shape of the traffic sign seat, thus causing a dispute with the marketing display company.

The case actually involved two issues that were related to each other. First, did the appearance that only others needed to use were considered functional? Second was the fact that the fact that the patent had expired was enough to allow others to copy freely?

In the decision of the TRAFFIX case, the Supreme Court of the United States evaded the question of whether the appearance features included in patented products could of course not be protected by the trademark law, but it believed that an appearance would appear in patent documents unless it was incidental, Arbitrary or decorative elements, that is, should be considered as strong evidence of functionality, the plaintiff can only be protected by overturning this evidence. At the same time, the Supreme Court held that whether or not a competitor has the same form of use must be used to determine whether the shape is functional. The correct criteria is to examine whether the shape is critical to the “purpose or purpose” of the product, or whether the appearance will affect the “cost or quality” of the product. The appearance that meets this standard, regardless of whether it is applied for a patent or not, whether the patent expires, cannot be protected by the trademark law.

American aesthetic function

At present, there is a general view that if an appearance is once the main part of a design, it can be used as preliminary evidence that the appearance does not have a function. Because the design is mainly decorative, if it is functional, it should be included in the protection of practical patents. However, this view does not seem to stand up to the test of "theory of aesthetic function."

The so-called “aesthetic function theory” is a concept juxtaposed with the “practical function theory”. It first appeared in the United States Court of Appeals for the Ninth Circuit in 1952 that in examining the verdict of whether a porcelain pattern could be protected, the institute considered that “if the pattern is An important reason for the commercial success of a product is that, in the absence of patents or copyright protection, imitation should be allowed for the sake of free competition.” This view was too general and was later attacked by other Circuit Courts of Appeal because it actually meant “The more attractive the design is, the less protective it is.” The US court later tried to avoid the concept of “aesthetic function”.

However, in the case of TRAFFIX, the U.S. Supreme Court held that if a shape is not important for the “use or purpose” of the product and it does not affect the “cost or quality” of the product, it is necessary to further examine whether the shape has “aesthetic function”. ” That is, prohibiting others from using the form will make it fall into an unfavorable competitive position that is not obviously related to reputation. Unfortunately, the Supreme Court did not conduct in-depth and detailed discussions on aesthetic functions. European protection of three-dimensional trademarks European legislators are also aware of the problem of overemphasis on the possibility of permanent monopoly on the protection of distinctiveness, and decided to give priority to functionality in the conflict between significance and functionality. The first directive established by the European Community in 1988, while recognizing three-dimensional marks, has adopted Article 3, Paragraph 1 (e) of the Directive to explicitly exclude the mark consisting solely of the following: that is, the nature of the merchandise itself. To obtain a certain technical effect necessary; to give the goods the real value.

With regard to what constitutes the nature of the product itself, the European Court of First Instance considered that the appearance of a double-sided concave and grooved soap would be protected due to the presence on the market of many soaps that were not of this appearance. The appearance of the product is not determined by the nature of the product.

With regard to what is necessary to obtain a certain technical effect, we may soon see the outcome of the case of the European Community Court against Philip Electronics of the Netherlands v. Remington Consumer Products Co., Ltd. The basic case of the case was that Philips had invented and produced three razors as early as 1966 (see Figure 2) and applied for a patent. In 1985, it applied for registration of a three-head razor. Two-dimensional graphic trademark, the registration has the effect of a three-dimensional trademark based on the British 1994 new trademark law. In 1995, Remington Company also began to produce a similar three-head razor model number DT55, and was therefore sued by Philips for trademark infringement.

Although the European Community Court has not yet ruled on the case, in January this year, the general prosecutor of the Court has announced its own preliminary views. He believes that the key to the case is to determine whether Philips' three-head razor is necessary for obtaining a certain technical effect. It cannot be considered that it can be permanently protected by the trademark because it can achieve the same effect through other forms. . We do not know whether the EC Court will agree with the prosecutor's opinion, but the answer should be announced soon.

As for what constitutes the shape of the “essential value of the given commodity”, since no actual case has occurred, it cannot be examined in detail at the moment, but when the British court tried the three-sharp razor of Philips, it was thought that The appearance of a razor does not belong to having "substantial value", and it is pointed out that "substantial value" should mainly refer to the aesthetic value. In other words, the main purpose of consumers to purchase this product must be to enjoy or admire art.