14 March 2019Trademarks

IPOS sides with Isetan over Scotch Whisky in GI feud

The  Intellectual Property Office of Singapore (IPOS) handed defeat to the trade body that protects the Scotch Whisky industry last week, marking the first time the office has considered Singapore’s Geographical Indications Act since it came into force.

In a press release issued yesterday, March 13, IPOS reported that the  Scotch Whisky Association (SWA) was unsuccessful in disputing the registration of an applied-for trademark owned by Japenese retailer  Isetan Mitsukoshi.

Isetan applied to register its mark, ‘Isetan Tartan’, which covers goods such as whiskies in March 2016.

The retailer already has registrations for its trademark in class 33 in Japan and France, while its applications are pending in Malaysia and Thailand.

However, in China, Isetan’s application was denied on the basis that the word “Tartan” is likely to mislead consumers into thinking the products originate from or are associated with Scotland. Isetan has appealed against this decision.

Following the trademark’s publication in Singapore, the SWA opposed the mark, arguing that because trademarks can’t be registered if they contain a geographical indication (GI), the Isetan trademark should not be registered because “Tartan” is an iconic symbol of Scotland and can function as a whisky GI.

But Tan Mei Lin, IPOS’s principal assistant registrar, rejected the association’s “misconceived” argument, holding that the relevant issue was not whether “Tartan” can or cannot function as a GI but whether it is actually a GI.

“There is no evidence to show that ‘Tartan’ is used to identify goods. Neither is there evidence from the opponent as to what characteristics ‘Tartan’ whiskies possess. In fact, the opponent focussed on the qualities of a different geographical indication, namely, Scotch Whisky,” concluded Lin.

The SWA also argued that the applied-for trademark shouldn’t be registered as the use of a GI in relation to goods that didn’t originate in the place indicated by the GI would mislead the public.

Lin noted that even if “Tartan” is a GI, the association couldn’t overcome the hurdle that “Tartan” isn’t actually registered as a GI in the UK.

While SWA provided evidence of the registration of “Scotch Whisky” as a GI in the UK, it didn’t provide any evidence to show “Tartan” was protected.

Lin dismissed SWA’s other arguments and ordered that Isetan’s trademark would proceed to registration.

This Geographical Indications Act, which came into force in 1999, will be repealed on April 1, 2019 when the new GI Act 2014 comes into force.

Lindesay Low, legal deputy director at SWA, said: “We are obviously disappointed with this decision. We now need to consider its contents carefully and decide upon our next steps. At this stage, I don’t feel that it would be appropriate for us to comment further.”

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More on this story

7 June 2018   The Court of Justice of the European Union has ruled on a case in which a German individual was accused of violating the Scotch Whisky Association’s geographical indication rights.
18 December 2019   Duncan Taylor Scotch Whisky has lost in its bid to invalidate six trademarks that use the term ‘Loch Ness’ for alcoholic spirits.