This is the first Chinese judgement which recognizes 3D trademark infringement.

Chivas is the owner of the trademarks “Chivas Regal” (Figure 1), “Chivas Regal and its device” (Figure 2), “Chivas Brothers” (Figure 3), as well as a three‐dimensional trademark (Figure 4) covering the goods “alcoholic beverage” in class 33.

Yantai Aowei Winery Co., Ltd (Yantai Aowei) and Yantai Chivas Winery Co., Ltd (Yantai Chivas) produce and sell products under the brand Elysee Regal Whisky in Yantai City. The bottle of the product (Figure 5 & 6) obviously copies the unique shape of the bottle of the Chivas Regal 12 Years Old, which is the 3D trademark of Chivas. Likewise, the label and package (Figure 7 & 8) also copy the label and packaging of Chivas Regal 12 Years Old, which are also Chivas’ trademarks. Even worse, the characters marked at the bottom of the Yantai Chivas bottle are the same as the Chivas trademark “Chivas brothers” (Figure 9). Therefore, Chivas filed a lawsuit against the manufacturer and the retailer on the ground of trademark infringement.

In the first instance, the Hangzhou Intermediate People’s Court recognized that, in addition to the illegal reproduction of the characters marked at the bottom of the bottle and the imitation of the package and label trademarks of Chivas, Yantai Aowei and Yantai Chivas has reproduced the shape of the Chival bottle, thus infringing Chivas’ three dimensional trademark. In accordance with the Trademark Law of China, the court ordered the defendants to immediately cease the infringing acts, make an apology in the newspapers, and pay an amount of RMB 500,000 as damages.

Yantai Aowei appealed against the first instance Judgment, but without any convincing evidence. Finally the Zhejiang High Court rejected their appeal, and sustained the judgment of first instance.

Wan Hui Da represented Chivas in this case.

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Comments

The significance of this case is that Chinese court, for the first time, confirmed 3D trademark infringement. Although Chinese trademark law has allowed 3D trademark registration since last amendment more than 10 years ago, the enforcement of 3D trademark is still very difficult in China. In recent years, administrative authorities such as AICs in different regions have made such attempt as to protect 3D trademarks, but this is still highly controversial in China, due to the concern that the 3D trademark protection may lead to over‐protection, as 3D trademarks may occupy the usual shape of the products, leading to illegal monopoly. Chinese courts have not yet issued judgment confirming the 3D trademark infringement before this judgment, which makes this judgment a pioneering precedent in China, although this does not necessarily mean that the Chinese courts will open the door of protecting 3D trademark actively.

The ground of the court for rendering the maximum judiciary damages of RMB 500,000 is the evidences of infringement showing the large scope of the infringement, and more importantly, the court takes into the consideration that both defendants, by using the identical company name as Chivas, and using two different entities for joint infringement, and repeatedly producing and selling the same infringing products even with number of penalty decision issued by AICs, showing the malicious intent of infringement.