Chinese court recognises infringement of 3D mark

Chivas has been successful in a dispute involving its three-dimensional (3D) trademark for the shape of a whisky bottle.

Chivas is the owner of the following trademarks for “alcoholic beverages” in Class 33 of the Nice Classification:

• CHIVAS REGAL:
  
• CHIVAS REGAL (and device):
  
• CHIVAS BROTHERS:
  
• a 3D trademark:
  

Yantai Aowei Winery Co Ltd and Yantai Chivas Winery Co Ltd produce and sell whisky under the brand Elysee Regal Whisky in Yantai City. The bottle of the product (depicted below) copies the unique shape of the Chivas Regal 12 Years Old whisky, which corresponds to Chivas' 3D trademark.

Likewise, the label and packaging of the Elysee Regal product (depicted below) copy the label and packaging of the Chivas Regal 12 Years Old whisky, which are also protected by trademark registrations.

In addition, the characters found at the bottom of the Elysee Regal bottle are identical to Chivas' trademark CHIVAS BROTHERS:

Chivas filed a lawsuit against Yantai Aowei and Yantai Chivas on the grounds of trademark infringement.

At first instance, the Hangzhou Intermediate People’s Court recognised that, in addition to the illegal reproduction of the trademark CHIVAS BROTHERS at the bottom of the Elysee Regal bottle and the imitation of Chivas' packaging and labels, Yantai Aowei and Yantai Chivas had reproduced the shape of the Chivas bottle, thus infringing Chivas’ 3D trademark. In accordance with the Chinese Trademark Law, the court ordered that the defendants:

• cease the infringing acts immediately;
• make an apology in the newspapers; and
• pay Rmb500,000 in damages.

Yantai Aowei appealed against the first instance judgment. The Zhejiang High Court rejected the appeal and upheld the judgment of the lower court.

Although the Chinese trademark law has allowed the registration of 3D trademarks since its last amendment over 10 years ago, the enforcement of 3D trademarks is still very difficult in China. In recent years, administrative authorities, such as the Administrations for Industry and Commerce (AICs) in different regions, have made attempts to protect 3D trademarks; however, this issue is still highly controversial in China, due to the concern that the protection of 3D trademarks may lead to over-protection, as 3D trademarks may consist of the usual shape of the products. The decision in this case is thus important, even though it does not necessarily mean that the Chinese courts will start protecting 3D trademarks actively.

The court ordered that the defendants pay the maximum damages of Rmb500,000 because the evidence submitted by the plaintiff showed the wide scope of the infringement. More importantly, the court took into consideration the fact that the defendants used a company name identical to that of Chivas, and repeatedly produced and sold infringing products despite a number of decisions issued against them by the AICs, thereby demonstrating their malicious intent.

Zhang Yan and Wang Zhonglian, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented Chivas in this case