PRC Courts Grant Trade Dress Protection for Handbags which Overall Appearance is a Combination of Generic Design Elements
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. 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 cases decided in December 2019 by Jiangsu Higher People’s Court and Beijing Intellectual Property Court, which applied the same approach and granted trade dress protection on combinations of generic design elements for a honey product manufacturer and a popular restaurant chain. These illustrate the threshold of distinctiveness for an iconic style or product series with generic design elements under the “totality of the circumstances” approach.