SWA loses trademark battle over ‘tartan’

18th March, 2019 by Nicola Carruthers

The Scotch Whisky Association (SWA) said it was “disappointed” over a recent ruling that allows a Japanese retailer to register the trademark ‘tartan’, arguing that the term can serve as a geographical indication for Scotch whisky.

The SWA believes that 'tartan' can function as a geographical indication for Scotch whisky

The SWA believes that the term ‘tartan’ can function as a geographical indication for Scotch whisky

In March 2016, Japanese retailer Isetan Mitsukoshi filed for the term ‘Isetan Tartan’ at the Intellectual Property Office of Singapore (IPOS) to be used for 18 classes of goods and services.

SWA filed a notice of opposition to the application in January 2017, citing that the word ‘tartan’ cannot be trademarked as it is an “iconic symbol of Scotland” and can function as a geographical indication (GI) for Scotch whisky.

The case marks the first time the Geographical Indications Act was considered at IPOs since it came into force in 1999.

In addition to providing extensive evidence to show the long association between tartan and Scotland, the SWA also argued that Scotch whisky producers frequently incorporate the tartan pattern on their labels or the word ‘tartan’ in their brand names

However, Tan Mei Lin, IPOS’s principal assistant registrar of trademarks, said that the tartan on the labels was used for the “purpose of identifying the whisky distillery and not for the purpose of identifying the product”. To function as a GI, the sign must identify a product, she said.

Mei Lin added that “there is no evidence” to show that ‘tartan’ is used to identify goods from Scotland and said that the relevant issue is whether ‘tartan’ is a GI in the first place. GIs are used to identify goods with a given quality, reputation or other characteristic attributable to their origin.

She said: “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.”

The SWA also further claimed that the mark should not be registered as the use of the mark is prohibited in Singapore by the GI Act. However, the GI Act only protects GIs that are protected in their country of origin.

However, Mei Lin said that ‘tartan’ is not a GI that is protected in the UK and that there “is no evidence before me to suggest that ‘tartan’ is protected as such in the UK”.

As such, the opposition fails on all grounds, Mei Lin concluded.

SWA legal deputy director Lindesay Low said: “We are obviously disappointed with this decision. We now need to consider its contents carefully and decide upon our next steps.”

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