It is difficult for three-dimensional (3D) trademarks to obtain protection in China – especially judicial protection. The recognition of 3D mark infringement is highly controversial when the mark is also a bottle shape, as consumers – as well as some people's courts – tend to treat bottles as containers or packaging, rather than trademarks that can indicate the product's source. In a recent case, Chivas Holding (IP) Limited submitted sufficient evidence regarding the use of its 3D marks, proving that consumers treat the Royal Salute bottle as a trademark and can distinguish Royal Salute products from others by the shape of the bottle alone.
Royal Salute is a brand of Scotch whisky produced and launched by Chivas Brothers as a tribute to Queen Elizabeth II on the day of her coronation. Named after the traditional 21-gun salute, the premium Scotch whisky is aged for a minimum of 21 years.
Chivas Holding (IP) Limited owns four registered 3D trademarks pertaining to the shape of the Royal Salute bottle in Class 33, which covers different types of alcoholic beverage, whisky, wine and aperitif, among other things. The four marks are almost identical, except for their designated colours: ruby, sapphire, emerald green and clear (Figure 1).
Yantai Ao Wei Wine Ltd, a repeat infringer, came to Chivas's attention when it started making and selling Elysee 21 YO whisky (Figure 2), which was an obvious copy of Royal Salute (Figure 3).
On December 26 2014 Chivas brought a lawsuit against Ao Wei and a local retailer before the Wuhan Intermediate Court on the grounds of trademark infringement and unfair competition.
The court scrupulously compared the accused product's bottle shape with those of the plaintiff's 3D marks and found that, other than a trivial difference, they were visually identical. The court further confirmed that the plaintiff's 3D mark is highly distinctive. Even though Ao Wei had used its registered trademark ELYSEE on the accused products, such use did not modify the court's finding of trademark infringement.
The court further held that Royal Salute has a long history and is widely distributed. Chivas has invested heavily in advertising and the product is reputable and well known among the relevant public. Therefore, the product may be considered to be a 'well-known commodity', as provided for by the Anti-unfair Competition Law. Royal Salute's packaging is so distinctive that it can both serve as a source identifier and constitute specific packaging. The accused product's packaging was similar to this unique packaging, which was likely to cause confusion and misidentification among the relevant public.
The court rendered a judgment on April 6 2016, granting an injunction and damages of Rmb500,000.
This case is notable not only because the court recognised the trademark infringement based on the shape of the bottle, which was registered as a 3D trademark, but also because it did not limit its finding to this analysis. The court also characterised the shape of the bottle as a "unique decoration of a well-known commodity", as provided for in the Anti-unfair Competition Law. As such, even if it could be argued that the shape of the bottle could not be protected under the Trademark Law, it would still be protected under the Anti-unfair Competition Law. The judgment was therefore fully justified and provides a different perspective of the legal protection available for bottle shapes.
For further information on this topic please contact Zhang Yan or Cao Jin at WAN HUI DA - PEKSUNG IP Group by telephone (+86 10 6892 1000) or email (firstname.lastname@example.org or email@example.com). The WAN HUI DA - PEKSUNG IP Group website can be accessed at www.wanhuida.com and www.peksung.com.
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