A lawsuit centering on the shape of a Christian Dior fragrance bottle has been added to a list of “Guiding” cases in China. Due to the decision of the Judicial Committee of China’s Supreme People’s Court to add the case to the running list of precedential proceedings, the Dior case, which got its start in 2014 when Dior sought to extended its international trademark registration for the three-dimensional trademark for its J’adore bottle to include protections in China, and its outcome “will now be binding on all Chinese courts.”
Following losses before lower trademark bodies in China, the Supreme People’s Court sided with Dior in April 2018, holding that the Chinese Trademark Office may have erred in denying the established brand protection for the water droplet-shaped bottle of its famous J’adore fragrance. According to a statement from the Supreme People’s Court at the time, “After a two-hour public hearing, the top court revoked the original rulings made by local courts in Beijing, which rejected the company’s application to register the bottle design as a trademark.”
Dior’s counsel had been clashing with the Chinese trademark bodies since its application for registration for its interestingly-shaped fragrance bottle was rejected in July 2015 by the China Trademark Office, which held that the bottle’s shape and design did not meet “the standards of a trademark.”
Appealing the decision to the Chinese Trademark Review and Adjudication Board (“TRAB”), Dior’s legal team argued that the distinctive shape of its J’adore bottle – which was first introduced in 1999 and enjoys trademark protection with the World Intellectual Property Organization, as well as with the U.S. Patent and Trademark Office (where is has been protected by a trade dress registration since 2002) – should also be subject to China-specific protections.
Counsel for the TRAB disagreed, arguing that the bottle “should be regarded as a common container for liquors,” and not an indicator of the source of the product. More than that, the TRAB determined that the evidence submitted by Dior to show that the shape of the bottle had acquired the requisite secondary meaning to serve as a trademark failed to show that the shape of the bottle had sufficiently acquired distinctiveness.
In furtherance of its appeal to the Supreme People’s Court, Dior’s local counsel Li Fengxian reiterated the brand’s position that the J’adore “perfume has grown popular among consumers after it came into Chinese market in 1999. Many consumers could easily recognize it as one of Dior’s perfumes through the bottle’s appearance.” As a result, “it should be qualified to be a trademark to get protection in line with Chinese laws.”
Siding with Dior, the Supreme People’s Court ordered the TRAB to review Dior’s trademark application again, specifically stating that the TRAB should reconsider the issue of distinctiveness, and where it is possible for the bottle shape to acquired distinctiveness through use in the marketplace, which was largely considered to be a “significant verdict” in favor of the LVMH Moët Hennessy Louis Vuitton-owned fashion brand.
By adding the case to the list of “Guiding” cases, the Judicial Committee of the Supreme People’s Court puts the Dior matter alongside other “complicated legal issues that can be cited in similar cases,” according to Beijing-based CCPIT Patent & Trademark Law Office. Aimed at “standardizing legal practice and forming a uniform criterion in adjudication,” the Supreme People’s Court had complied and published over a hundred “Guiding” cases as of 2019, with one of the matters from Michael Jordan’s lengthy trademark fight over his name being among the most recently-added to the list.
As for the ultimate status of Dior’s teardrop-shaped bottle mark in light of a second review by the TRAB, that is not yet known.