Peter Ollier and Janice Qu

A Shanghai court has awarded Rmb1.25 million ($182,000) to Diageo in a landmark case against a Shanghai company that was copying the trade dress of its bestselling Johnnie Walker Black Label Whisky.

The November 27 decision by the No 2 Intermediate Peoples Court was for an anti-unfair competition passing-off action rather than trade mark infringement. Diageo argued that Blueblood (Shanghai) Wine Co Ltd was using the same square bottle as Johnnie Walker and similar labels to sell its Polonius whisky. Diageo also accused Blueblood of selling Polonius online using pictures of Johnnie Walker.

“It is a remarkable decision...we argued that the defendant was copying the get-up of the bottle – that’s a pretty sophisticated argument in any jurisdiction,” said Luke Minford, China country manager for Rouse, which acted for Diageo in the case. The decision is part of a series of high profile judgments in favour of brand owners in China. On November 28 Xi Xiaoming, vice-president of the Supreme People’s Court was quoted by state-run newspaper China Daily as saying: “We should make sure that we can enable IPR holders to get enough compensation, which should deprive the infringer of any benefit and make the consequences for their actions dire.”

In the last 18 months China’s courts have made a number of high-profile rulings in which large amount of damages have been in awarded for IP infringement. In June last year the Supreme People’s Court awarded record damages of Rmb8.3 million ($1.1 million) in damages to Yamaha for trade mark infringement, the highest damages awarded for such an offence to a foreign company.Five other cases involving international IP holders were decided in the same week by high, intermediate and lower level courts:

Taiwanese record label Rock Records was awarded Rmb2.9 million ($414,300) in damages against a series of distributors in Guangdong, Shanghai and Jilin that were selling pirated albums;

Zespri, a New Zealand basic maker of Kiwi fruits, was awarded Rmb300,000 ($42,800) in compensation against a Shanghai company Nnishio for trade mark infringement;

3M Company won its case against a local company in for patent infringement and won Rmb200,000 ($28,580) in damages;

NEC Corporation has won a case against manufacturers in Guangdong Province and its distributors in Shanghai for counterfeiting its MP3 player and was awarded damages of Rmb500,000($71,400); and

Honda Motor Co won its case against a local company in Shanghai for patent infringement and was awarded Rmb600,000 ($85,700) in damages;

In the same speech Xi stated that, as laid out in the China’s National IP Strategy, China will establish more IP tribunals to handle civil, criminal and administrative cases together. He said that nine intermediate people’s courts and 14 district or county-level courts have set up IP tribunals to handle civil, criminal and administrative cases together. Minford welcomed the announcement, stating that, where an IP enforcement case has separate civil, criminal and administrative sections: “it is like pulling teeth to have them dealt with under one roof”.

But said: “We’ve not seen any procedures from the Supreme People’s Court that tell us how we can have a case brought together.”Last week the Shanghai Municipal Court issued a notice on how its IP tribunal will work. According to a translation of the guidelines, the tribunal will adopt a “collegial system” in which it will add administrative and criminal judges where necessary when hearing administrative and criminal IP cases. Only district and county level courts will have IP tribunals: higher and intermediate courts will continue to hear cases separately. Rouse also acted for Zespri in its case against Nnishio.

From:www.managingip.com