China's top court rules for Dior in IP case, raps trademark office

The Trademark Review and Adjudication Board had wrongly rejected a 2015 application by Dior to register a trademark of its tear drop-shaped J'adore perfume bottle.
The Trademark Review and Adjudication Board had wrongly rejected a 2015 application by Dior to register a trademark of its tear drop-shaped J'adore perfume bottle.PHOTO: REUTERS

SHANGHAI (REUTERS, CHINA DAILY/ASIA NEWS NETWORK) - China's top court has ruled in favour of French fashion house Christian Dior, overturning rulings by lower courts and rapping the local trademark office for rejecting an application by the firm to register a perfume bottle trademark.

The ruling comes as Beijing looks to play up its credentials for protecting and enforcing intellectual property (IP) rights, after being stung by criticism, including from the United States, that it does not do enough to protect against IP infringement.

The United States has threatened China with tariffs on billions of dollars of Chinese goods, in part to force Beijing to tackle what Washington calls theft of US intellectual property and forced technology transfers from US companies.

China said earlier this month (April) that it would introduce a system of punitive damages for IP infringements in a bid to strengthen IP enforcement for foreign firms and make sure offenders "pay a big price".

In a judgement on Thursday (April 26), also World Intellectual Property day, China's Supreme Court ruled in favour of Dior in a suit against the Trademark Review and Adjudication Board after a multi-year court battle.

In July 2015, the French company’s application to the Trademark Office of the State Administration for Industry and Commerce for trademark protection for the teardrop design of the bottle used for its J’adore scent in China was rejected.

The rejection came because the office determined the bottle’s shape and design did not meet the standards of a trademark.

Later, the French company launched an appeal to the Trademark Review and Adjudication Board with the State Administration for Industry and Commerce, but failed to win support.

The company then brought the board to court in 2016 and appealed in 2017, but both verdicts in the first hearing and appeal hearing ruled in favour of the board. The board's lawyer Sun Mingjuan argued that the bottle should be regarded as a common container for liquors, and it has “no obvious specificity”.

But Christian Dior insisted that the bottle is special enough and filed a final appeal to China’s top court.

“The perfume has grown popular among consumers after it came into Chinese market in 1999. Many consumers could easily recognise it as one of Dior’s perfumes through the bottle’s appearance,” company lawyer Li Fengxian said on Thursday. “So it should be qualified to be a trademark to get protection in line with Chinese laws.”

Ms Li said that in 2014, the company got an international registration for the bottle from the World Intellectual Property Organisation. Such a registration could make its trademark application process easier in member countries, “but we were still rebuffed in China”, she said.

Dr Cui Guobin, an IP associate professor at China's Tsinghua University, told the China Daily newspaper the ruling showed that the country would protect IP rights "no matter where it was from", but added there was still work to do.

"The ruling also implies that it is necessary to improve our trademark laws," he said.