The Scotch Whisky Trade Mark Wars

24 10 2016

The Scotch Whisky Association (SWA) has successfully registered a certification trade mark for ‘Scotch Whisky’ in Taiwan. The registration of the certification mark will give Taiwanese consumers greater confidence in the quality of the products they purchase and the industry better protection against fakes. Taiwan is one of the biggest markets for Scotch, particularly for single malts and the successful registration may see even more Scotch whisky producers exporting to Taiwan.

Certification Trade Mark

A certification trade mark is a special type of trade mark which shows that certain goods or services meet an official set of standards – that is, that in order to use the trade mark certain requirements need to be met. With the registration of this new certification mark, Scotch producers wishing to use the term in their Taiwanese sales must show that their product was made in Scotland from water, cereals and yeast and matured for at least three years. A second trade mark was also registered to protect the trade mark in Chinese characters. SWA hailed the registration of the marks as a “legal breakthrough” claiming that the new trade marks would make it more straightforward to take legal action against anyone trying to produce to sell fake Scotch in the future.

The Australian Connection

SWA also successfully registered the same certification mark in Australia in 2014. Under the Australian trade mark, a product may only be identified as ‘Scotch Whisky’ if the whisky has been wholly produced in Scotland in accordance with the UK Scotch Whisky Regulations.

Certification trade marks are regulated under Part 16 of the Trade Marks Act 1995 (Cth), and are defined as follows under s169 of the Act:

A certification trade mark is a sign used, or intended to be used, to distinguish goods or services:

(a) dealt with or provided in the course of trade; and

(b) certified by a person (owner of the certification trade mark), or by another person approved by that person, in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture;

from other goods services dealt with or provided in the course of trade by not so certified.

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