The S&F law blog

Chivas Regal tastes success in China securing special trademark status

The Chivas and Chivas Regal names have been recognized as well known trademarks

The Chivas and Chivas Regal names have been recognized as well known trademarks

A Scotch whisky distiller yesterday claimed a victory in the battle to protect its flagship brand in China.

The names Chivas and Chivas Regal – in English and Chinese characters – have been recognised by the Chinese Trade Marks Office (CTMO) as “well-known” trademarks.

Being granted that status elevates Chivas protection above that of ordinary registered trademarks, the firm said.

The ruling means that third parties will no longer be able to use the names or similar words to market other goods which “may cause confusion in China”.

Recognition for the brand comes after the Scotch Whisky Association (SWA) convinced the CTMO last August to recognize the phrase “Scotch whisky” as a “collective trademark”.

At the time, patent attorneys warned companies to register their own trademarks as well in order to protect their brands.

Figures from the SWA show that direct whisky exports to China grew by 5 per cent last year to £44 million.

Scotch now accounts for a fifth of all Scottish manufactured exports to the country.

Christian Porta, chairman and chief executive of Chivas Brothers, said: “This formal recognition of Chivas as a well-known trademark will strengthen protection of the Chivas brand in China.

“It prevents third parties from taking advantage of the reputation and goodwill that has been generated by the Chivas brand.”

He added: “This is an important result for Chivas Brothers as China is the largest market for Chivas Regal Scotch whisky and a significant investment is made to promote the brand throughout China every year.”

Chivas Regal is one of owner Pernod Ricard’s 15 “strategic brands”, which means it receives wide global distribution. The drinks giant’s other whisky brands include Ballantine’s, the Glenlivet, Aberlour and Scapa.

Porta added: “We are also extremely grateful to both the UK Embassy in Beijing and the SWA, which actively supported our efforts to achieve this well-known trademark recognition.”

Last year, the value of Scotch whisky exports topped £3 billion for the first time, with the equivalent of more than a billion bottles shipped abroad. A spokesman for the SWA said: “China is an important emerging market for Scotch and we’re working closely with distillers to ensure that there is a strong legal framework in place to protect their intellectual property rights.”

In its recent brands report, patent attorney firm Marks & Clerk highlighted steps China was taking to combat its reputation for counterfeiting.

Last year, a Chinese court awarded $182,000 to Diageo after a Shanghai firm was found to be copying the design of Johnnie Walker Black Label whisky.

Source: Shanghai Daily

Kaneka files suit against Pacific Rainbow
June 11, 2009, 1:49 pm
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LOS ANGELES—Kaneka Corp., Osaka, Japan, filed a lawsuit in U.S. District Court, Central District of California, Western Division, against Xiamen, China-based Xiamen Kingdomway Vitamin Inc. and City of Industry, Calif.-based Pacific Rainbow International, alleging patent infringement of Kankea’s U.S. patent (No. 7,145,044) related to the production of reduced coenzyme Q10 (CoQ10), also known as ubiquinol. Kaneka’s U.S. subsidiary, Pasadena, Texas-based Kaneka Nutrients L.P., supplies reduced CoQ10 as Kankea QH™.

The lawsuit alleges Pacific Rainbow and Xiamen Kingdomway are directly infringing and/or actively inducing infringement of the Kaneka patent through sale of ubiquinol. Kaneka is requesting a preliminary and permanent injunction from infringement, as well as regular and treble damages due to “the willful and deliberate nature” of the infringement.

In response to INSIDER’s request for comment, Pacific Rainbow issued a statement: “Kingdomway has filed its own patent application on the reduced CoQ10 in China in early 2009. In addition, Kingdomway is using an entirely different processing method to produce the reduced CoQ10. Accordingly, there has never been and will not be any infringement of the Kaneka patent. There is also no grounds for or merit to the patent infringement suit … [and we] intend to vigorously defend all claims brought in this litigation, and are confident we will prevail.”

Source: China Daily