PRC Courts Grant Trade Dress Protection for Handbags which Overall Appearance is a Combination of Generic Design Elements

• Author: Xu Jing,Ye Wanli,Liu Xinyu
• Published date: 20/03/2020
• Citation: jd0057
• Date: 20 March 2020
• Subject Matter: Intellectual Property

2020/9/21

PRC Courts Grant Trade Dress Protection for Handbags which Overall Appearance is a Combination of Generic Design Elements | …

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CHINA LAW INSIGHT

PRC Courts Grant Trade Dress Protection for

Handbags which Overall Appearance is a

Combination of Generic Design Elements

By King & Wood Mallesons on March 20, 2020

By Xu Jing, Ye Wanli, Liu Xinyu, King and wood Mallesons

On December 30, 2019, Guangzhou Tianhe District People’s Court issued a judgment

granting trade dress protection for two iconic handbag series designed and sold by a

famous luxury good company . The distinctiveness determination test in this case is

particularly helpful to luxury brands for protecting iconic styles or product series that

normally include generic design elements that have been widely used by the industry.

In this case, the court ruled that a combination or arrangement of generic design elements

used by the industry is protectable as trade dress under the unfair competition law, if 1)

these elements have broad scope of “design freedom”, 2) the plaintiff incorporates its own

unique design features to these elements, and 3) the combination or arrangement of

these elements demonstrates unique overall appearance that satisfy the distinctiveness

requirement.

After the amendment to the trade dress provision in 2017, PRC courts become more open

to the “totality of the circumstances” approach rather than the traditional three-step test,

i.e. courts will evaluate all relevant factors together and slightly lower the threshold on the

determination of distinctiveness or degree of fame for the trade dress if the defendant’s

bad faith in causing public confusion is apparent. This trend is mirrored by another two

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