By  on March 13, 2012

BEIJING — First Hermès, and now Chivas Regal.

A Chinese court has ruled that a China-based clothing maker can legally use the words “Chivas Regal” on the apparel it manufactures, according to reports in state media.

This legal tussle over trademarks comes just a few weeks after Hermès lost an appeal with the China Trademark Appeal Board. In that case, according to state media, Hermès could not register a version of its name in Chinese because another Chinese company, named Wen, had already done so.

Both cases underscore the legal intricacies of branding in the fast-growing Chinese market.

The Beijing No. 1 Intermediate People’s Court agreed with the ruling of State Administration for Industry & Commerce’s Trademark Appeal Board that a Wenzhou garment maker could register its application to trademark the words of the Scotch whiskey maker on clothing, shoes and hats, noting that the brand was used on different products than whiskey. The court said that Chivas Bros. hadn’t successfully made its brand name “well-known” in China as of 2003, when the Chinese clothing company first applied for a trademark.

A spokesman for Chivas Bros., owned by the French company Pernod Ricard, said, “The name Chivas (both in English and Chinese characters) and Chivas Regal (in English) were recognized in 2009 by the Chinese Trademarks Office (CTMO) as well-known trademarks in China. Third parties may not use or register Chivas (in English or Chinese) or Chivas Regal (in English) or any similar words for any goods — not only spirits — where such use may cause confusion in China.”

Hermès failed in its attempt to register a Chinese version of its name, Ai Ma Shi in pinyin, because a Chinese firm, the Dafeng Garment Co. of Guangdong, had already done so. Chinese speakers refer to Hermès with that name and the French brand had argued that was enough to allow it to register the name, but the trademark board disagreed.

Dan Harris, a Seattle-based intellectual property lawyer, told WWD late last month that he didn’t see any significant impact on luxury brands from the Hermès decision. However, the Chivas Regal case is now the second time within a month that a major Western brand has lost in its attempt to protect its trademark.

“This is really quite similar” to the recent Hermès case, said Beijing intellectual property lawyer Stan Abrams, who said he assumes the whiskey maker just wasn’t able to prove that consumers were familiar enough with the brand.

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