[Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky

Dr Titilayo Adebola, Lecturer in Law at the University of Aberdeen, with research interests in international intellectual property, plant variety protection and geographical indications  kindly provides the following update on a recent case involving the enforcement of the Scotch Whisky mark:

On 15 November 2019, a Federal Court in Melbourne, Australia, granted a series of permanent injunctions restraining Rex D’Aquino (principal director, D’Aquino Bros Pty Ltd) and D’Aquino Bros Pty Ltd (Australian based liquor company) from infringing and unlawfully using the Australian certification trade mark for Scotch Whisky. The Scotch Whisky Association (SWA) instituted the Federal Court action following an ABC investigation which revealed D’Aquino Bros Pty Ltd allegedly sold whisky produced in Orange, New South Wales, Australia as Scotch Whisky produced in Scotland, in breach of Australian trade mark law. The brands of contested whisky included “The Black Scot”, “The Clansmen” and “J.B.R Scotch Whisky.” These brands fail to meet the established requirements for Scotch Whisky.

Scotch Whisky is whisky distilled and matured in oak casks for at least three years in Scotland and bottled at a minimum alcoholic strength of 40 per cent alcohol by volume. There are five categories: single malt, single grain, blended malt, blended grain and blended Scotch Whisky. Scotch Whisky is protected as geographical indications or trade marks in over 100 countries. The flexibility in protection reflects the choice offered in the World Trade Organisation’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS  obliges members of the WTO to provide any legal means to protect origin-based products. Accordingly, while Scotch Whisky is protected in the United Kingdom and European Union as geographical indications in line with the Scotch Whisky Regulations 2009 and Scotch Whisky Technical File respectively, it is protected in Australia as a certification trade mark.

Thirsty work all this lawyering...
Image: anokarina

As demonstrated in the Aquino’s Bros Pty Ltd case, the SWA is actively committed to protecting Scotch Whisky globally [see another recent case here]. Indeed, the SWA has been successful in its mission because Scotch Whisky is not regarded as a generic type of whisky anywhere in the world. This is not the same for some other alcoholic drinks such as Cognac. For example, in the recent Mercosur negotiations between the European Union and Latin American countries, the parties agreed to transition periods that must expire before locally produced ‘Cognacs’ will be phased out and the designation is reserved exclusively for products of France. Conversely, Scotch Whisky is expressly identified as a protected geographical indication without the need for a transition period.

In an interview with the author on the Aquino Bros Pty Ltd case, Mr Alan Park, the SWA’s Director of Legal Affairs concludes that the SWA “is very pleased with the consent orders because the problem products have been removed from the market. The main defendants who were involved have consented to the injunctions from the court or agreed to written settlements to resolve this case.”