CONFERENCE PREVIEW: IP SUMMIT Where is Scotch whisky protected by a GI?
We have specific GI protection in 11 countries around the world that have the register but it also has protection as a GI throughout the EU by virtue of
the Spirit Drinks Regulation. Some countries
have also implemented their obligations under the WTO TRIPS Agreement which states that a product should be protected against the use of any means that indicate or suggest a GI. Furthermore, it is also recognised and protected in the national laws of 14 other countries and further applications are in hand.
What are the benefits of the GI indicator?
Where there is specific GI protection it makes our job much easier. When you don’t have specific protection you have to prove the brand’s reputation before the courts. If you have that protection you no longer need to because it’s already protected in national law. Overall, it makes for cheaper and more cost-effective action but also gives us the angle to use local enforcement authorities so we can make a complaint to them to take action.
What are the drawbacks of not obtaining protection?
In markets where we don’t have protection it can be uphill struggle as you have to fall back on
general laws of unfair competition and consumer protection. In some jurisdictions the legal system can be a bit shaky. Aside from having to prove its reputation we also need to prove what the description ‘Scotch whisky’ itself means, which also adds costs and complexity to the case.
How has the Scotch whisky brand been misused around the world?
One of the most obvious ways to misuse a brand or GI is to put a specific Scotch whisky description on a fake product. However, what we are seeing more of is the use of other indicators of Scottish origin. Whereas it may not be described specifically as ‘Scotch’ whisky an image could be used showing a bagpiper or a kilt, and the consumer could wrongly assume it is from Scotland.
It’s become a very frequent occurrence and we are busy tackling this. Te issue is recognised in IP law on a global level through the TRIPS Agreement so the ball is very much in our court when it comes to deciding what to take action on.
What is the system for monitoring trademark applications?
We have a trademark watching service which keeps a close eye on this. Around 2,000 notices for trademark
applications pass through every month and we currently have around 400 active oppositions.
If a trademark is applied for including the word whisky, and we think it has a Scottish association, we believe the use could be deceptive and will oppose it. Te watching service will look out for the specific trademark ‘Scotch whisky’ but also linked words and images. Tey are given a list of names to watch out for and know what appears frequently.
How are you made aware of suspected infringements?
Five lawyers in the department deal with different countries and use a variety of mechanisms such as the use of local lawyers and investigators. We also check the markets of problem areas on a frequent basis. Oſten problems are highlighted by our members who are checking shelves to see if their product is on sale. However, a large chunk of our business also comes from consumers who report having spotted a product abroad claiming to be Scotch whisky.
What are some of the most problematic jurisdictions?
Tis changes frequently. We have had a number of problems with China where Scotch whisky
158 World Intellectual Property Review September/October 2013
www.worldipreview.com
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