Scotch Whisky Association loses tartan trademark battle in Singapore

The Scotch Whisky Association (SWA) has lost a trademark dispute against Japanese retailer Isetan Mitsukoshi over use of the word ‘tartan’, having claimed that it could function as a GI for whisky.

Isetan had been attempting to register the trademark ‘Isetan Tartan’ at the Intellectual Property Office of Singapore (IPOS), however the SWA had put in an objection. This is the first time that IPOS has heard such as case, after the Geographical Indications (GI) Act came into force in 1999.

The SWA argued that trademarks cannot be registered if they contain a GI. It said that tartan is an iconic symbol of Scotland and can function as a geographical indication for whisky. It cited the Intellectual Property Law of Singapore (2013) which states: “GIs often consist of the actual geographical name of the place of origin of the products but other indicating terms may also suffice as GIs as long as they identify the goods as originating in the territory, region or locality in the territory. Thus, it may be argued that iconic symbols such as the Eiffel Tower, the Great Wall of China or the Taj Mahal may serve as GIs of products from France, China or India.”

It also stressed Scotland’s long association with tartan and submitted evidence to show that Scotch producers often incorporated different tartan patterns onto their labels.

However, IPOS’ principal assistant registrar, Tan Mei Lin, rejected this argument, taking issue with whether tartan was a GI in the first place.

According to documents from the hearing, it states: The Opponent’s [SWA] submission is, however, misconceived. The relevant issue is not whether tartan is or is not iconic of Scotland, whether consumers associate tartans with Scotland or even whether it can or cannot function as a geographical indication but whether the tartan (or more precisely, the word “Tartan”), is a geographical indication.”

“GIs are used to identify goods with a given quality, reputation or other characteristic attributable to their origin. However, there was no evidence that “Tartan” is used to identify whiskies, or show what characteristics “Tartan” whiskies possess, and the association’s opposition failed.”

The report also noted that the GI Act only protects GIs that are protected in their country of origin. It stated that there was no evidence presented that demonstrates that “Tartan” is protected as such in the UK.

It added: “In this regard, the Opponent [SWA] furnished evidence of the registration of “Scotch Whisky” as a geographical indication with the Department for Environment, Food and Rural Affairs, which administers the Protected Food Name scheme, including spirit drinks in the UK. However, the Opponent did not produce any evidence to show that “Tartan” is also accorded protection as a geographical indication in the UK.”

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