In China, it is difficult for a 3D trademark to get protection, especially judicial protection. The recognition of infringement on 3D mark is a highly controversial issue when the 3D mark itself is also the shape of the bottle, as consumers – as well as some People’s Courts - tend to treat the bottle as container or packaging rather than as the trademark that can indicate the source of the products. In this case, Chivas submitted sufficient evidences of use of the 3D marks, proving that consumers actually treat the bottle of “Royal Salute” as a trademark, and are able to distinguish the products from others through the shape of the bottle only.
Royal Salute is a brand of Scotch whisky produced and launched by Chivas Brothers in 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 (“Chivas”) owns 4 three-dimensional (3D) registered trademarks of the bottle shape of Royal Salute whisky in class 33, covering the goods of alcoholic beverage, whisky, wine, aperitifs, etc. The four marks are almost identical, except for their designated colors: ruby, sapphire, emerald green, and no designated color.
Yantai Ao Wei Wine Ltd. (Ao Wei), a repeat infringer caught the attention of Chivas when it started making and selling an “Elysee 21 YO” whisky which was the obvious copycat of Royal Salute.
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On December 26, 2014, Chivas brought a lawsuit against Ao Wei and a local retailer in Wuhan before the Wuhan Intermediate Court on grounds of trademark infringement and unfair competition.
The Court scrupulously compared the bottle shape of the accused products with those of plaintiff’s 3D marks and found that other than a trivial difference, they are visually identical. The Court further confirmed that the plaintiff’s 3D mark is highly distinctive. Even though Ao Wei did use its registered trademark “ELYSEE” on the accused products, such use did not modify the Court’s finding on trademark infringement.
The Court held further that Royal Salute whisky has long history and is widely distributed in terms of geographical coverage. Chivas has invested heavily in its advertisement and promotion so that the product is reputable and is known by the relevant public. Therefore, the product may be considered as a well-known commodity as provided by the “Anti-Unfair Competition Law”. The packaging of Royal Salute is so distinctive that it can serve as source identifier and constitute a specific packaging. The packaging of the accused products is similar to that peculiar packaging, which is likely to cause confusion and misidentification among the relevant public, about the source of the products.
The Court rendered a judgment on April 6, 2016, granting an injunction and damages for an amount of RMB 500,000.
WHD - PEKSUNG Group represented Chivas in the litigation.
The case is interesting not only because the Court recognized the trademark infringement based on the shape of the bottle registered as a 3D trademark, but also because it did not limit its finding to this analysis. The court also charaterised the shape of the bottle as a “unique and wellknown decoration of a commodity”, as provided in the Anti-Unfair Competition Law. It was a sort of back-up statement: even if it could be argued that the shape of the bottle should not be protected under the Trademark Law, the shape was also protected by the Anti-Unfair Competition Law. The judgment was therefore fully justified, and provides different perspective of the legal protection of the shape of bottles.