Our role in trademark law

12 Jun 2017

Last month, we joined more than 10,000 lawyers, trademark agents and brand owners at the 139th Annual Meeting of the International Trademark Association (INTA) in Barcelona. It was a hectic schedule which combined US style breakfast seminars and very late Spanish dinner meetings, leaving little time between the end of one day and the start of the next. We packed a lot in: attending educational sessions on topics such as online brand protection and US trademark law, as well as holding case review meetings with our law firms from around the world and meeting with some of our Members' legal counsel who were also attending the event.

Ever since the nineteenth century, Scotch Whisky brands have featured among the world's most famous trademarks: the Johnnie Walker striding man and the Dewar's Highlander, to give just two examples. In comparison the Scotch Whisky Association is a relative newcomer to INTA but trademarks are an important element of our legal protection strategy.

First of all, the Association is a trademark owner. In countries such as China, Australia and Myanmar we have protected "Scotch Whisky" as a collective or certification trademark on behalf of the industry. This helps ensure that only whisky produced in Scotland in accordance with UK law can be described as Scotch in those territories. It also enables us to take legal action for trademark infringement against those who try to sell fake "Scotch".

Secondly, we monitor trademark applications around the world to make sure that marks which evoke Scotland are not registered for any whisky apart from Scotch. For example in China we have defeated applications featuring the Scottish terms "Glen" and "Loch" which were being registered for Chinese spirits, successfully arguing that they might deceive consumers. At any one time, the Association has around 300 pending oppositions across the world.

The Association is now a member of INTA. Not only does this enable us to access the organisation's collective knowledge, built up over a century, but it also allows us to influence the development of trademark law: we are represented on its Unfair Competition Committee. Even though we are now back in grey, rainy Scotland, we continue to use trademarks on a daily basis to safeguard Scotch.

Lindesay Low, SWA Senior Legal Counsel
Caitlin O'Donnell, SWA Legal Counsel