A growing number of three-dimensional (3D) trademarks have been recognized and protected across the globe, reflecting the increasing importance of non-traditional marks in modern branding strategies. This development raises important questions whether protection as a 3D trademark offers greater advantages compared with traditional two-dimensional (2D) marks, and what legal requirements must be met for a sign to qualify for protection in this distinctive form.
I. A GENERAL OVERVIEW OF TRADEMARKS OF 3D TRADEMARKS PROTECTED
Definition and characteristics of 3D trademarks
A three-dimensional (3D) trademark is expressed in three dimensions: length, width, and height. It is a visually perceptible sign that can be graphically represented, typically through technical drawings, photographs, or digital renderings. 3D trademarks belong to a broad category of non-traditional trademarks[1]. When comparing 3D trademarks with 2D trademarks, the primary distinction lies in their dimensional representation and the nature of the sign being protected. A 2D trademark typically consists of flat visual elements such as words, logos, or images that are perceived on a single plane. In contrast, a 3D trademark involves a physical form or spatial configuration, such as the shape of a product or its packaging, that may function as a source identifier.
How are 3D trademarks classified? Based on definitions from WIPO and practice in many countries, 3D trademarks can take several forms:
- The shape of the packaging, such as the iconic contour of the Coca-Cola bottle or the Chanel perfume box.
- The shape of a product or a part of it, such as the body design of the Volkswagen Beetle or the form of a Zippo lighter.
- Another category includes trade dress or overall get-up, such as the architectural layout and interior design of McDonald’s restaurants.
Other examples include 3D versions of logos or symbols, such as the Mercedes-Benz emblem as it appears on the front of cars. Service businesses can also protect 3D elements like Korean Air’s flight attendant uniforms, which are protected under Class 39 for transport services. Likewise, some banks in the U.S. have registered the physical layout of their branches as 3D trademarks. These examples highlight the versatility and cross-industry application of 3D trademarks, underscoring their value in protecting brand identity across both goods and services.
Protection standards for 3D trademarks
For a 3D trademark to be protected, it must meet two main conditions: distinctiveness and non-functionality.
Firstly, a 3D trademark must possess distinctiveness and unique characteristics which enable consumers to recognize the commercial origin of the product. Unlike conventional word or logo marks, the distinctiveness of a 3D trademark is more difficult to establish, especially when the shape in question resembles common or functional forms used in the relevant trade. Under the EUIPO, a 3D shape is deemed inherently distinctive only when it departs significantly from the norms or customs of the sector. For instance, a container shape that is purely functional or typical in the industry will not qualify unless it possesses a markedly unusual design that consumers immediately associate with a particular brand. On the other hand, jurisdictions like the United States allow for 3D trademarks that are not inherently distinctive to be registered upon proof of “acquired distinctiveness” or “secondary meaning”. This means the shape must have become recognizable by consumers as a source identifier through consistent and prolonged use[2], extensive advertising, high sales volume, or consumer survey evidence. Examples include the Coca-Cola contour bottle, which has achieved registration and broad protection by virtue of its unique shape and long-standing use in commerce.
Secondly, the non-functionality requirement is a critical legal principle governing the registrability of 3D trademarks. Trademark rights can potentially last indefinitely renewable as long as the mark remains in use whereas other forms of intellectual property, such as patents or industrial designs, offer protection for limited periods and are intended to reward innovation, not to confer permanent market exclusivity so those deemed functional are typically barred from registration. According to the WIPO, a 3D sign is considered functional if its shape is necessary to achieve a technical result. Many jurisdictions apply a “two-prong functionality test” to determine whether a 3D sign is functional. The first prong examines whether the shape is essential to the use or purpose of the product. The second considers whether granting exclusive rights to that shape would put competitors at a significant disadvantage, such as limiting their ability to offer similar functional features. If either prong is satisfied, the sign is typically deemed ineligible for trademark protection. This principle is particularly strict in jurisdictions such as the European Union, where the Court of Justice has consistently ruled against the registration of purely functional shapes under trademark law. In short, the non-functionality doctrine ensures that trademark law does not overreach into areas more appropriately governed by patent or design rights. It maintains the balance between protecting brand identity and preserving competition in markets where functional product shapes are vital.
II. AN ANALYSIS OF VIETNAMESE LAW RELATED TO THE PROTECTION OF 3D TRADEMARKS
Vietnamese law considers 3D trademarks as a protected form of trademark under Clause 1, Article 72 of the Intellectual Property Law. However, in practice, protection of 3D trademarks in Vietnam is often denied, mainly based on lack of distinctiveness because of a common shape that describes/increases significant value.[3] To date, Vietnamese legislation has not established a separate legal framework applicable to the registration of three-dimensional marks. However, it is possible to register the shape of a product as a 3D trademark, provided that the shape performs the function of a trademark in the marketplace.
According to the current regulations of Vietnamese law, particularly Articles 72, 73, and 74 of the Law on Intellectual Property 2005 (as amended in 2009, 2019, and 2022), a 3D trademark is eligible for protection if it satisfies all of the following conditions:
- It is a visible sign (Article 72): This ensures that consumers can easily recognize and distinguish the products of one business from those of another, thereby fulfilling the basic function of a trademark. In cases where a 3D design is concealed within the product and is not clearly visible, such a sign does not meet the conditions required to be recognized as a 3D trademark.
- It possesses distinctiveness (Article 74): For 3D trademarks, protection is often refused under Points b, c, and n of Article 74. Specifically, a 3D trademark will be considered non-distinctive if it consists of the common shape of goods (Point b), features that add significant value to the goods (Point c), or signs that are identical or not significantly different from industrial designs that have been previously protected by others (Point n).
- It does not fall under the grounds for refusal of protection (Article 73): The mark must not consist of the inherent shape of the goods, or a shape dictated solely by the technical function of the product. This provision ensures that no unjustified monopoly is granted over functional or commonly used shapes in the industry.
In addition, if a 3D trademark is refused protection under Points b, c, Clause 2, Article 74, the applicant may still invoke the exception provided in Clause 5, Article 26 of Circular No. 23/2023/TT-BKHCN. In such case, the applicant can demonstrate that the sign has been and is being used as a trademark and that is has been widely recognized by consumers as having acquired distinctiveness in relation to the relevant goods or services prior to the filing date.
III. PRACTICAL EXPERIENCE AND INSIGHTS REGARDING THE REGISTRATION OF 3D TRADEMARKS IN VIETNAM
Practical challenges
A major obstacle to register 3D trademarks in Vietnam is the stringent requirement regarding distinctiveness and the non-functional nature of the product’s shape. Additionally, 3D signs are often not perceived by consumers as indicators of commercial origin, but rather as mere product design, making it even more difficult to demonstrate their distinctiveness. Moreover, due to the lack of specific legal provisions and standardized examination criteria for 3D trademarks, the examination process in Vietnam still largely depends on subjective judgments. This often results in confusion and occasionally inconsistent outcomes in accepting or rejecting trademark applications.
Key considerations when registering 3D trademarks in Vietnam
Based on the practical handling of applications in Vietnam and international experience, several recommendations can improve the chances of successfully protecting 3D trademarks:
- First, present images of the trademark from multiple angles. Since a 3D trademark is represented in three-dimensions rather than in two-dimensions, applicants should submit a full set of photographs or drawings showing all sides of the mark (front, back, top, bottom, left, right). This allows the examiner to gain a comprehensive understanding of the structure and unique identifying features of the shape.
- Second, the detailed description in the application should emphasize the unique identifying characteristics of shape, such as height-to-width ratios, embossed or recessed structural details, cuts, rounded edges, or uncommon design elements compared to others in the same category. This is a crucial way to prove the non-functional nature of the shape.
- Third, the applicant should prepare supporting documents to demonstrate that their 3D trademark has acquired distinctiveness through actual use. According to Clause 5, Article 26 of Circular No. 23/2023/TT-BKHCN, in order to apply the exception when assessing distinctiveness, the applicant must provide evidence that the sign has been widely used in its function as a trademark (such as the number of consumers aware of the mark, the starting time of use, the scope and extent of use before the filing date, revenue generated from the sale of goods or provision of services, etc.).
- Fourth, attach documents showing that the shape has been protected abroad. If the 3D trademark has already been successfully registered in jurisdictions with advanced IP systems such as the EU, Japan, or South Korea, submitting the foreign protection certificate, examination reports, or official decisions can strengthen the argument that the sign is distinctive and non-functional. This is a common practice for applications filed under the Madrid system or in parallel in multiple countries.
- Finally, companies should proactively assess the distinctiveness and non-functional characteristics of the 3D sign before filing. If the product shape is new and creative, it may be strategic to first register it as an Industrial Design. This form of protection grants rights for an initial period of 5 years, extendable up to 15 years. During this time, the product shape can be widely used in the market to build brand recognition. Later, the company may seek trademark protection as a 3D mark, arguing that the sign has acquired distinctiveness through actual use.
For further information, please contact:
Lam Nguyen Hoang Thao, Russin & Vecchi
LNHThao@russinvecchi.com.vn
[1] A non-traditional trademark may include shapes, colors, sounds, scents, motions, or other sensory signs that serve to distinguish the goods or services of one entity from those of others.
[2] According to the case law of the US Supreme Court in the case of Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), the above 3D trademark can only be registered if the trademark function is demonstrated through use.
[3] Article 74.2(b), Article 74.2(c) of the Vietnam Intellectual Property Law.
