The shapes of commodities may involve such intellectual property rights as design patent, copyright of work of art, three-dimensional trademark, and packaging and decoration under the Anti-Unfair Competition Law. This article discusses, from the perspective of the Anti-Unfair Competition Law, whether the shapes of commodities are protected under this law and its applicable conditions.
Article 6 of the Anti-Unfair Competition Law (23 April 2019 amendment) provides that a business shall not commit the following acts of confusion to mislead a person into believing that a commodity is that of another person, or has a particular connection with another person: (1) using without permission a label identical or similar to the name, packaging or decoration, among others, of another person’s commodity with certain influence … and (4) other acts of confusion sufficient to mislead a person into believing that a commodity is that of another person, or has a particular connection with another person.
Regarding whether the shapes of commodities fall within the scope of packaging and decoration of commodities, there is no clear provision regarding this issue in the Anti-Unfair Competition Law or its relevant judicial interpretations. However, it is worth noting that article 2 of the Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition provides that, “the name, package and decoration of commodities that have notable characteristics for distinguishing the source of commodities shall be regarded as the ‘specific name, package and decoration’ prescribed in item (2) of article 5 of the Anti-Unfair Competition Law. If it is under any of the following circumstances, the people’s court shall not affirm them as the specific name, package and decoration of well-known commodities: … The shape formed only due to the nature of the commodities; the shape formed in order to obtain technical effects; and the shape that produces substantive value to the commodities…” This provision implies that if the shapes of commodities do not fall within the scope prescribed above, theoretically speaking, it could constitute unique packaging and decoration of a well-known commodity.
In practice, there are several cases where the courts have determined that the shapes of commodities could constitute packaging and decoration of commodities in the Anti-Unfair Competition Law. In the earlier instance of appeal concerning the counterfeit and decoration dispute of Mitsubishi Electric Corporation v Taizhou Aike Appliances, the court of appeal held that if the shape of commodity appearance satisfies the constitutive elements for commodity decoration under the Supreme People’s Court’s judicial interpretation, as well as other elements protected by law, it can be protected pursuant to the article 5 of section 2 of the Anti-Unfair Competition Law.
This is the first time that a court made clear in the form of a judgment that the shapes of commodities could be protected under the Anti-Unfair Competition Law if certain conditions are met. In the later dispute of M&G Chenguang Stationery v Ningbo Weiyada Pen Making, Ningbo Weiyada Stationery and Shanghai Chengshuo Industry and Trade, concerning the dispute of using unique decoration of a well-known commodity without authorization, the Supreme Court held that, “decoration of commodity could generally be divided into the following two types: (1) text and image decoration, namely texts, pictures, colours and their combination on the outside of the commodity; and (2) shape and structural decoration, which is the appearance and structure of the commodity, which is within the commodity and belongs to the commodity itself but has decorating effect in whole or in part, excluding shapes that are determined by the nature of the commodity itself, or shapes that are necessary to obtain a technical effect, or shapes that enable the commodity to have substantial value.”
The author opines that in combination of the Anti-Unfair Competition Law and its judicial interpretations, as well as existing judicial practice, in order to have the shapes of commodities protected under the Anti-Unfair Competition Law, there are strict applicable conditions, including positive conditions and negative ones.
The positive conditions include：(1) the said commodity shall have a certain level of influence, and as to the so-called “certain level of influence”, one could refer to the provisions on well-known commodity in article 1 of the judicial interpretation regarding the Anti-Unfair Competition Law; (2) the shape of the commodity in question is the same or similar to the said commodity with a certain level of influence; and (3) the shape of the commodity shall have a certain level of recognition function, but the standard of such identification function should be equal to, or lower than, the identification function of trademark signs, and should be limited to a level that it misleads a person into believing that a commodity is one of another person, or has a particular connection with another person.
The negative conditions include: (1) the shape shall not belong to one that already exists in an existing design or commodity, and shall not be a simple addition to an existing design or shape; and (2) the shape shall not be one that is formed due to the nature of the commodity itself, or one that is necessary to obtain a technical effect, or one that enables the commodity to have substantial value.
In conclusion, although it is possible that the shapes of commodities can be protected under the Anti-Unfair Competition Law if certain applicable conditions are met, there are still many problems in specific judicial practice, such as how to determine whether two shapes are similar or not, which urgently need to be solved in judicial policy and adjudication practice.
Geng Yunfeng is a patent attorney and an associate at Sanyou Intellectual Property Agency