Shanghai company found guilty of imitating get-up of Johnnie Walker whisky

The Shanghai Second Intermediate People’s Court has ordered Blueblood (Shanghai) Wine Co to pay Rmb1.25 million (approximately $183,000) in damages to Diageo Brands BV for imitating the get-up of Diageo's Johnnie Walker Black Label whisky (November 27 2008).

Diageo is the owner of various JOHNNIE WALKER and JOHNNIE WALKER BLACK LABEL trademarks. The famous Johnnie Walker Black Label whisky is sold in a square glass bottles with black and gold labels.

Diageo had already lodged a complaint against Blueblood with the Shanghai Administration for Industry and Commerce in 2006 and Blueblood had been fined twice for imitating the get-up of Diageo's Johnnie Walker Black Label whisky. However, Blueblood continued using a similar get-up and sold approximately 37,000 additional bottles of whisky under the POLONIUS mark - Blueblood used the same square bottle, similar black and gold labels and similar bottle caps. Diageo subsequently filed suit against Blueblood before the Shanghai Second Intermediate People’s Court.

The court ruled in favour of Diageo. The decision was based on a finding of unfair competition, rather than trademark infringement. Under Articles 5(1) and 5(2) of the Anti-unfair Competition Law, it is prohibited to:

imitate the registered trademarks of third parties; and
use names, packaging or decoration that are identical or similar to those of a famous commodity.

Diageo’s success in this case is significant, as it was based on the claim that Blueblood was imitating the get-up of the Johnnie Walker Black Label whisky. It is generally extremely difficult to succeed on such claims.

The decision highlights the fact that the courts are increasingly committed to protect IP rights owners. For example, in the same week the courts issued two decisions in favour of trademark owners. Shanghai company Nnishio was ordered to pay Rmb300,000 (approximately $42,800) in damages to Zespri, the world’s largest kiwi fruit marketer, for trademark infringement. Similarly, Zhongshan Lidan Electric Appliances Co and Zhongshan Ridian Digital Technology Co were ordered to pay Rmb500,000 (approximately US$71,400) in damages to Nippon Electric Co for producing and selling fake MP3 players under the mark NEC.

Ai-Leen Lim, Bird & Bird, Hong Kong

Shanghai company found guilty of imitating get-up of Johnnie Walker whisky

Related Topics