Tomatin appeal over hotel complex rejected
Highland distillery Tomatin has lost an appeal against a company’s plan to build a hotel development named after the Scottish village.
In November 2019, Scotch whisky producer Tomatin launched a trademark lawsuit against the Tomatin Trading Company (TTC) over its plan to build a multi-million-pound hotel and food/retail village in Tomatin. The site received planning approval in late 2018.
The lawsuit claimed that TTC has infringed the distillery’s UK trademark for the word ‘Tomatin’, which was registered on 18 January 1963 under class 33 (Scotch whisky).
In 2018, the distillery secured two further trademarks in relation to alcoholic beverages, retail, education, and bar and leisure services (classes 33, 35, 41, and 43).
In 2019, the hotel developer registered its own trademark for ‘Tomatin Trading Company’ across several classes that overlapped with the distillery’s own marks. TTC removed class 33 for Scotch whisky from its application after the distillery requested it.
The distiller believed that TTC’s use of the ‘Tomatin’ name for its hotel development takes unfair advantage of the brand’s reputation.
However, in a Court of Session decision published on 6 October 2021, judge Lady Wolffe ruled in favour of TTC, and said the public would not make a link between the two companies.
Tomatin Distillery appealed the decision but it has now been dismissed by the court in a ruling published on 14 June.
During the appeal, evidence was provided by whisky writer Iain Russell, who said Tomatin single malt was “a niche brand within a niche market” and is best known among single malt enthusiasts.
According to the court document, this is supported by several factors, including the brand’s limited availability. Most of Tomatin’s sales comes from the distillery, and specialist and online retailers. The brand is not available in UK supermarkets.
Globally, Tomatin was the 25th best-selling single malt, at 67,800 cases, the court noted. In the UK it ranked 39th in sales among leading single malt Scotch brands.
Furthermore, Tomatin has ‘limited brand awareness’ and is ‘not well-known among the UK whisky-drinking public’ according to evidence from Russell and whisky writer Charles Maclean. This was attributed in part to the distillery’s ‘very low spend’ on advertising.
Lord Stephen Woolman noted: “The intellectual property judge concluded that the average consumer of the distillery’s goods and services was a whisky aficionado or explorer. Such a person is discerning about single malts and was unlikely to be confused. We agree. The intellectual property judge did not err in considering the average consumer of the distillery’s goods and services, as opposed to the average consumer of TTC’s goods and services.”
Furthermore, the ruling said the action by the distillery was premature as trademark infringement can only be determined when the development is built.
The court added that there is no warrant for the distillery to have a monopoly on the use of ‘Tomatin’ for non-whisky classes.
Woolman added: “Consumers who are less knowledgeable about single malts, such as those who may visit TTC’s development, would readily distinguish between the parties’ respective goods and services. They would understand ‘Tomatin’ to be a geographical descriptor. The addition of ‘Trading Company’ emphasises the bright line between the sign and the marks.”
A spokesperson for Tomatin Distillery, said: “Whilst we are disappointed that Lord Woolman has upheld the original ruling regarding trademark infringement, we are delighted that the judgement regarding our trademark registrations has been overturned.
“We are pleased to now be able to draw a line under the matter and, as ever, remain committed to creating a thriving community here in Tomatin.”