Great Scotch! Win Against Counterfeit Whisky Caps in China

How lovely to hear once again from our former guest Kat, bonny Scottish lassie Kate Manning, who is writing specially for our dedicated readers about a topic that is even closer to Scottish hearts than getting even with the perfidious Sassenachs -- the defence of Scotch whisky.  Here she tells of a battle in far-off China to preserve the palates of discerning dilettantes in distant Myanmar:

Great Scotch! Win Against Counterfeit Whisky Caps in China

Few distilled spirits have such international appeal, and are as widely produced, as whisky.

Cat's whiskers? No, cat's whisky!

National rules and regulations governing its production, coupled with intellectual property laws, not only allow it to maintain its distinctive place on the global market; more importantly, it also helps us to distinguish philosophic wine and the oil of conversation from the devil’s brew and poison scourge (admittedly, the morning after a bottle of either tends to be one and the same). So let’s raise a dram to the Scotch Whisky Association (SWA), the trade organisation for the Scotch whisky industry, for its recent success against counterfeiting in the Chinese civil courts.

Relying on its collective trade mark, registered in China in 2008, and geographical indication (GI) for ‘Scotch Whisky’, the SWA successfully brought civil proceedings in the Anqing Intermediate People's Court against Anhui Guangyu Packaging Technology Company Ltd and its director for manufacturing bottle caps stamped with the words ‘Scotch Whisky’. The caps were being used on counterfeit goods sold in Myanmar.

The court granted an injunction ordering the company to cease infringement of the ‘Scotch Whisky’ trade mark and awarded the SWA damages and costs. The judgment wasn’t appealed and is now final, allowing the SWA to enforce the award of damages (the director may also be facing criminal proceedings, although the SWA notes that discussions with the public prosecutor are ongoing).

Lindesay Low, SWA senior legal counsel, explains why the decision is an important one: 

The case was a first for us in China in a number of respects. To begin with, although we have obtained many favourable administrative decisions against infringers, this was the first time we had concluded proceedings in the Chinese civil courts. Not only were the penalties greater but also, after subjecting our evidence to careful scrutiny, the protected legal status of Scotch Whisky was upheld, sending a clear message to other would be counterfeiters.

It was also interesting due to its international aspect in that we had disrupted a cross-border supply chain. Previously we had only taken action against products manufactured and sold in China.

Hector was not quite legless,
but he wasn't quite the
quadruped he once was ...

Finally, this was the first case where we had successfully taken action against a manufacturer of packaging. Normally we sue after demonstrating that the liquid inside the bottle is not Scotch. In this instance we were able to convince the court that the caps were going to be used illegally even where no complete bottles were discovered. This is helpful as increasingly manufacturers of fake spirits split the production process between different locations to reduce the chance of being caught.

Using its resources to pursue a global IP and lobbying strategy on behalf of a billion pound industry, has the SWA forged a new path for those looking to enforce their IP rights in the Chinese civil courts?

Scotch Whisky recently registered as a GI in 17 member countries of the Organisation Africaine de la Propriété Intellectuelle here
Whisky from Islay’s Ardberg distillery aged in space (which probably wouldn’t qualify for the valuable Scotch Whisky GI) here
Famous Scottish distillery cats here
Whiskey versus whisky here
Whiskey and wimmen here