Chinese Trademark Law

Doing business in China is far from easy. And the Chinese trademark laws and procedures are quite complex. Take for example a recent case of Chivas Regal.

“A Chinese court has rejected a petition by the Chivas Regal, maker of Scotch whiskey, to strip a garment maker of the right to use the famous brand name.”

The Chinese system does not have a single entity for all IP registration. To make things worse, although China adopted the NICE classification system, it developed its own sub-classes. An additional hurdle, quite a few subclasses show up in more than one category.

“The man from Wenzhou, identified by his surname Wen, in 2003 applied to the trademark authority to register Chivas Regal as a trademark for garments, shoes and caps, Shanghai Daily reported.

Chivas Brothers challenged several times but was rejected by the trademark board, according to the Legal Evening News.

The board has said the Zhejiang man didn’t violate Chinese trademark law because the brand is used in different kinds of products.

Chivas Brothers, owned by French group Pernod Ricard, also argued that the company has also used Chivas Regal on clothing. But the Chinese court said it found that the brand was only printed on the uniform clothing for the whisky maker’s salespeople, not on clothing for commercial use.

And that might be in another subcategory.

Before the 2003 registration by the Wenzhou squatter, Chivas Brothers (the brand owner) had registered the marks in a number of Classes, including 33, which includes alcoholic beverages. However, just because a brand owner registers the mark in one Class (or for a certain set of goods/services), this does not automatically protect against other registrants for different goods/services or for products in other Classes.

China, like most countries follows the “first to file” rule.
Another hurdle in trademark disputes in China is to prove your trademark is “famous”.