Scotch-ing decision leaves a tart taste in Isetan's mouth

The Scotch whisky industry has generated a number of interesting case reports lately. Kat friend Mok Ho Fai now brings for Kat readers the intriguing recent story of the fate of the ISETAN TARTAN mark in Singapore.

When the mark "ISETAN TARTAN" is used for whisky that is not Scotch whisky, is it of such a nature as to deceive the public as to the whisky's geographical origin? In a decision that should be of interest to the whisky lovers among us, the Singapore High Court in Scotch Whisky Association v Isetan Mitsukoshi Ltd [2019] SGHC 200 answered "yes".

The Dispute

Isetan Mitsukoshi Ltd ("Isetan") is a Japanese department store group selling a variety of different products, including alcoholic beverages. The Scotch Whisky Association ("TSWA") is an association of leading distillers, blenders, and exporters of Scotch Whisky.

TSWA filed an opposition against Isetan's application to register the mark "" for all alcoholic beverages, excluding beer and sake. A tartan is a cross-checked repeating pattern of different coloured bands, stripes, or lines of definite width and sequence.

Tartans have been said to serve the symbolic function of maintaining identity and local solidarity in Scotland. Today, almost all Scottish clans have several tartans attributed to their name.

An example of a tartan is below:

The "Royal Stewart tartan", the personal tartan of Queen Elizabeth II

The Decision

Before the Intellectual Property Office of Singapore Hearings and Mediation Department, the Principal Assistant Registrar dismissed TSWA's opposition on all grounds. TSWA, dissatisfied with the decision, appealed, relying on three grounds, as follows:

(i) The use of the mark was of such a nature as to deceive the public as to its geographical origin, and was thus contrary to s 7(4)(b) of the Trade Marks Act ("TMA");

(ii) The registration of the mark is contrary to s. 3 of the Geographical Indications Act (1999 Rev Ed.) ("GIA"), because it entails the use of a geographical indicator;

(iii) The trade mark contains a geographical indication in respect of a wine or spirit, and is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication, and is thus contrary to s 7(7) of the TMA. TSWA succeeded on the first ground of opposition.

The Decision Before the High Court, TSWA sought to demonstrate that: (1) the tartan is an iconic symbol of Scotland and that it is used to signify a link with Scotland; and (2) Singapore consumers recognise tartan as a Scottish icon. Hence, TSWA contended, the mark was of such a nature as to deceive the public as to its geographical origin. The parties agreed that "public" refers to consumers who drink and purchase whisky.

On the first point, the Judge accepted that there was "ample evidence" to show that tartan is an iconic symbol of Scotland, referring to books, surveys and journals as evidence.

Turning to the public's familiarity with tartan, and Scottish culture and traditions more generally, the Judge considered that there was sufficient evidence that the public in Singapore is familiar with tartan and Scotland more generally. The evidence he considered included:

• Statistics showing significant tourism numbers and spending figures from Singaporeans visiting Scotland;

• A two-night "Taste of Tartan" festival held by the Highlander bar in Singapore in 2006 for St Andrew's day;

• Colonel William Farquhar, the first Resident and Commandant of Singapore, was a Scotsman.

• Singapore's first European style church was named St Andrew's Church.

                                                             Whisky distilleries and regions in Scotland

The Judge was of the view that this evidence showed that Singapore had an "enduring association" with Scotland. As such, the Judge concluded that the average whisky consumer is likely to be particularly familiar with Scotland and its tartan. He opined that the nature of the deception is also intensified because Scotland is globally renowned for its whisky. (Interestingly, the Judge observed, by contrast, that if the mark "ISETAN TARTAN" were to be used on an alcoholic beverage that is not whisky, he would have agreed with Isetan that it does not fall afoul of s 7(4) TMA.)

Accordingly, the Judge agreed that the use of "ISETAN TARTAN", for whisky not of Scottish origin, gave rise to a sufficiently serious risk of public deception.Having found that the first ground of opposition was made out, the opposition as a whole succeeded.

TSWA's second and third grounds of opposition were dismissed. Essentially, these grounds required TSWA to prove that the registration of the mark would entail the use of a geographical indication. However, TSWA faced several difficulties on this front:

1) The Judge held that "TARTAN" is not a geographical indication, because it does not denote a particular place, or attribute a given quality reputation or characteristic to a place.

2) While the Judge agreed that "Scotch Whisky" is a geographical indication, Isetan had not "used" the indication "Scotch Whisky" in the mark "ISETAN TARTAN". TSWA argued that the word "use" should be interpreted to embrace wider concepts, such as "indirect commercial use" and "evocation", relying on the ECJ decision of Scotch Whisky Association v Klotz (a 2018 TSWA case regarding the use of the word "Glen" in "Glen Buchenbach".).

However, the Judge declined to do so, considering that there were differences between the EU legislation in that case (which expressly prohibits "indirect commercial use" as well as "evocation" of a geographical indicator) and Singapore's equivalent legislation, the GIA, where only "use" of a geographical indicator is proscribed.*

The decision is the first reported case wherein the Singapore High Court has considered an opposition under s 7(4)(b) (although there have been several registry cases that have considered the issue.) The upshot of the decision is that those seeking to register a mark that may be associated with a particular geographic origin, should be mindful of the s 7(4)(b) prohibition.

*Postscript: Since the decision in TSWA v Isetan, TSWA recently enjoyed another victory in Europe (reported here). Among other findings, the Hanseatic Higher Regional Court of Hamburg found that the use of "Glen" in a whiskey named "Glen Els" constitutes an "evocation" of the geographical indication "Scotch Whiskey".

In the author's opinion, the Hamburg decision may have limited persuasiveness under Singapore law (at least in interpreting what constitutes "use" of a geographical indication), in light of the aforementioned observations made by the Judge in TSWA v Isetan that wider forms of “use” such as “indirect commercial use” and “evocation” are not prohibited by the GIA.

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