Practice Amendment Notice

PAN 01/11 - Practice in relation to trade marks containing the words 'Scotch' and 'Scotch Whisky'

1.The Scotch Whisky Regulations 2009 (SI 2009 No. 2890) External Link, which apply to drinks and whisky distillates manufactured in the United Kingdom, contain a number of provisions governing the labelling, packaging, advertising and promotion of Scotch Whisky and Scotch Whisky-based beverages. Although the Registrar has historically taken objection to trade marks which are evocative of Scotland via section 3(3)(b) of the Trade Marks Act 1994, such objections have been limited to whisky and whisky-based beverages. The 2009 Scotch Whisky Regulations now exclude the use of terms such as 'Scotch' and 'Scotch Whisky' in respect of any drinks product other than Scotch Whisky, meaning the Registrar has had to revise his practice. This notice sets out that new practice in respect of trade mark applications which seek protection for beverages in classes 29, 30, 32 and 33, and which contain any or all of the following:

(i) The terms 'Scotch' and/or 'Scotch Whisky';

(ii) The terms 'Campbeltown', 'Islay', 'Highland', 'Lowland' and/or 'Speyside', all being the names of protected localities and regions for the purposes of Scotch Whisky production;

(iii) Words, images or other elements which are evocative of Scotland.

Background

2. The Scotch Whisky Regulations 2009 seek to regulate the Scotch Whisky industry by establishing laws governing the production, packaging and marketing of Scotch Whisky and Scotch Whisky-based beverages. Given the Regulations' reference to product labelling, the Registrar now has an obligation to ensure that trade marks containing references to 'Scotch' and certain other terms are registered in full compliancy with the law.

3. The specific provisions relevant to the registration of trade marks are as follows:

  • 6.-(1) A person must not label, package, sell, advertise or promote any drink as Scotch Whisky or Scotch if it is not Scotch Whisky.

    (2) A person must not label, package, sell, advertise or promote any drink in any other way that creates a likelihood of confusion on the part of the public as to  whether the drink is Scotch Whisky.

  • 10.-(1) A whisky or whisky-based drink must not be labelled, packaged, advertised or  promoted in a way that includes the name of a protected locality or a protected region unless-

    - (a) in the case of whisky, the whisky is Scotch Whisky that has been distilled in that  locality or region; or

    - (b) in the case of a whisky-based drink, the only whisky in the drink is Scotch Whisky that has been distilled
            in that locality or region.

4. In the case of any labelling or packaging which implies that the product contained therein is Scotch Whisky per se, section 6 is clear - that product must be Scotch Whisky. For the purposes of assessing trade marks, the Registrar has interpreted this as meaning that, in the majority of cases, any sign containing the terms 'Scotch' and/or 'Scotch Whisky' - where protection has been applied for in respect of any and all drinks products found in classes 29, 30, 32 and 33 - can only be registered for Scotch Whisky.

5. There will be a small number of exceptions to this rule - most notably where an applicant uses the words 'Scotch' and/or 'Scotch Whisky' as part of composite trade mark denoting Scotch Whisky-based mixed drinks. In such cases, the applicant will be required to limit its specification to reflect the goods intended for coverage - further details and examples are provided at paragraphs 13 and 14 below.

6. With the exception of marks clearly denoting Scotch Whisky-based mixed drinks, any other mark containing the words 'Scotch' and/or 'Scotch Whisky', applied for in respect of any drink product other than Scotch Whisky, will be subject to a substantive objection.

7. By comparison, the provisions set out in section 10 are less restrictive - the conditions relating to use of the five localities (listed at paragraph 1(ii) above) apply only to 'whisky' and 'whisky based drinks'. This means that trade marks containing such designations will not be subject to an objection or any further qualification unless they have been applied for in respect of whisky and/or whisky-based drinks.

What objections will be raised?

8. To date, the Registrar has raised objections against marks containing references to Scotland (including the use of terms such as 'Scotch' and 'Scotch Whisky') solely under section 3(3)(b) of the Trade Marks Act 1994 - on the basis that such marks would deceive the public as to the nature and quality of the product. This type of objection, which has been applied solely to whisky and whisky based liqueurs, has been avoidable via suitable limitation of the class 33 specification. In all cases, and dependent upon other considerations such as overall distinctiveness, applicants have therefore been able to obtain protection for marks containing terms such as 'scotch' and 'scotch whisky' for the full range of drinks products.

9. Following implementation of the Scotch Whisky Regulations, this will no longer be possible. Where a mark containing the words 'Scotch' and/or 'Scotch Whisky' is applied for in respect of any drink other than Scotch Whisky (and where it meets all other requirements), the examiner will now raise objections under both section 3(3)(b) and section 3(4). This is because the use of such a mark would not only deceive the public as to the nature of the product, but would also be prohibited by other law, namely the Scotch Whisky Regulation. If the specification contains broader terms which imply protection for inter alia whisky, the applicant will be invited to limit its specification down to 'Scotch Whisky'. However, if the specification fails to contain broad terms which imply coverage for Scotch Whisky, or if it simply covers beverages other than whisky, the application will be refused outright.

10. Where a trade mark contains any of the five protected regions and localities listed in sections 10(5) and 10(6) of the Regulations (see paragraph 1(ii) above), and does not include any references to 'Scotch' or 'Scotch Whisky', the examiner will only raise an objection in respect of whisky and whisky-based drinks. As with marks containing the words 'Scotch' and 'Scotch Whisky', objections will be based on sections 3(3)(b) and 3(4) of the Trade Marks Act 1994. Further, such objections can be overcome by limiting claims to whisky and whisky-based drinks such that they only denote Scotch Whisky produced in the locality or region referenced in the mark. However, no objection will be taken to any other drinks products listed in the specification.

11. Where a trade mark does contains elements which are evocative of Scotland, but does not contain any references to 'Scotch', 'Scotch Whisky', nor any of the five localities and regions, the Registrar's practice will remain unchanged. In respect of alcoholic beverages in class 33, the Registrar will raise a section 3(3) objection only, and will invite the applicant to limit the specification in order to ensure that, as far as whisky and whisky-based drinks are concerned, coverage only extends to such products being Scotch and/or Scotch-based, all being produced in Scotland.

Examples in practice

12.This section sets out a number of examples, indicating how the Registrar will apply the new approach in practice:

  • The mark 'LOCH CASTLE SCOTCH WHISKY', applied for in respect of 'carbonated drinks' in class 32, and 'alcoholic wines; whisky; whisky-based liqueurs; vodka' in class 33, would be subject to objections under sections 3(3)(b) and 3(4) on the basis  that it deceives the consumer as to the nature and quality of the goods, and that it  indicates intended use of the term 'Scotch Whisky' on drinks other than Scotch Whisky. In this case, the applicant would be required to delete the claims to 'carbonated drinks', 'alcoholic wines', 'whisky-based liqueurs' and 'vodka', and invited  to amend the term 'whisky' to read 'Scotch Whisky' only.
  • The mark 'LOCH CASTLE SPEYSIDE', applied for in respect of 'carbonated drinks' in class 32, and 'alcoholic wines; whisky; whisky-based liqueurs; vodka' in class 33, would be subject to similar objections under sections 3(3)(b) and 3(4), but  only insofar as the class 33 claims to 'whisky' and 'whisky-based liqueurs' are concerned. The applicant would be invited to limit the latter terms to ensure they  denote Scotch Whisky products produced in Speyside (it being one of the five regions and localities listed in the Regulations), but the other terms could remain unchanged. An acceptable re-worded specification would therefore read as 'Scotch Whisky' and Scotch Whisky-based liqueurs produced in Speyside; alcoholic wines; vodka' in class 33, and 'carbonated drinks' in class 32.
  • The mark 'LOCH CASTLE', applied for in respect of 'carbonated drinks' in class 32, and 'alcoholic wines; whisky; whisky - based liqueurs; vodka' in class 33, would be subject to an objection under section 3(3)(b) only, and that objection would solely affect the claims to 'whisky' and 'whisky-based liqueurs'. The mark does not contain any of the terms listed in the Scotch Whisky Regulations 2009, and deception would only occur in respect of those products associated with Scotland i.e. 'whisky' and 'whisky-based liqueurs'. As is the case with current practice, the offending terms i.e. 'whisky' and 'whisky-based liqueurs' would need to be amended to 'Scotch Whisky' and 'Scotch Whisky-based liqueurs, whilst all other terms could remain as filed.

Wider application and exceptions

13. It is anticipated that the scenarios outlined above will account for most trade mark applications affected by the Scotch Whisky Regulations 2009. However, it is also inevitable that a small number of 'Scotch Whisky' marks seeking coverage for drinks products will not correspond to any of the three examples set out in paragraph 10 and/or will not be caught by the Regulations. In the case of marks which clearly denote Scotch Whisky-based mixed drinks, for example, the Registrar does not interpret the Regulation as a means of prohibiting the marketing of such drinks even where they contain terms such as 'Scotch' and 'Scotch Whisky'.

14. To illustrate this point, applications to register marks such as 'LOCH CASTLE SCOTCH WHISKY LIQUEUR' and 'LOCH CASTLE SCOTCH & SODA' for 'liqueurs and mixed alcoholic beverages' will not be rejected outright pursuant to section 6 of the Regulations. In such cases, the Registrar will raise an objection under section 3(3)(b) of the UK Trade Marks Act 1994, but will agree to waive that objection where the specification is limited to reflect the product signified by the mark itself. For example, in the case of 'LOCH CASTLE SCOTCH WHISKY LIQUEUR' and 'LOCH CASTLE SCOTCH & SODA', the specification would need to be amended to 'Scotch Whisky-based liqueurs and mixed alcoholic beverages, all produced in Scotland' in order to meet the criteria for publication.

15. Applicants should note that where it is not immediately apparent to the examiner that a trade mark containing terms such as 'Scotch Whisky' and/or 'Scotch' is intended to denote mixed drinks rather than whisky per se, the Registrar will apply a strict practice i.e. pursuant to section 6 of the Regulation, it will insist that the goods are limited to 'Scotch Whisky'.

16. In all such instances, each case will be examined on its own merits.

Implementation

17. The practice described above will come into effect from 24 October 2011.