Trademark case win for liquor chain

New Zealand independent liquor chain The Mill has won a trademark case against the Scotch Whisky Association with the help of Dunedin lawyer Sally Peart, a trademark specialist.

The Mill Liquorsave Ltd, which is based in New Plymouth, has a large number of trademarks relating to their products.

Ms Peart said the company applied for the trademark "Macgowans" in relation to its whisky-flavoured spirits.

That was later amended at The Mill's request to "whisky-flavoured spirits, none of the forgoing being whisky".

The trademark application was accepted by the Intellectual Property Office of New Zealand (Iponz).

The Scotch Whisky Association, the organisation which represents manufacturers of Scotch whisky, objected to the trademark application, she said.

"The Scotch Whisky Association has a mission to advocate for producers of Scotch whisky throughout the world and basically protect their market share.

"I have searched a number of international cases and they aggressively litigate against anybody who may be seen to be trying to pass off a product as Scottish where it might be even loosely regarded as whisky."

However, the association had rarely won a case except where the product was labelled as "whisky", Ms Peart said.

In the Macgowans case, the product was not whisky - it was an alcoholic beverage which had about 13.9% alcohol, sold for $10 a litre and was displayed in The Mill's stores alongside other cheap "spirits", she said.

"It doesn't represent itself to be a whisky and has no mention of whisky on its labelling."

Ms Peart said the main argument for The Mill was, if the opposition had succeeded, it would have given the association proprietary rights over any word that was Scottish in origin.

Scotch whisky producers had the resources to register trademarks for their products but should not be able to prevent Scottish, or Irish, names for which they did not have a registration being used.

"We made the point that Macgowans is also an Irish name and is probably best known to consumers of a certain age in connection with the Pogues, whose lead singer was Shane Macgowan."

The association objected to the application on six separate grounds and succeeded with none, Ms Peart said.

The assistant commissioner of trademarks, Jennie Walden, accepted Ms Peart's arguments that registration of the trademark in relation to "whisky-flavoured spirits, none of the forgoing being whisky", would not be misleading to the public which, in the case, was found to be people in New Zealand who were the prospective or potential buyers of the product.

"One of the main arguments we ran was that consumers of alcoholic beverages which retail at $10 a litre were unlikely to be the same group of consumers who would buy a bottle of Scotch, which retails anywhere from $50 upwards," Ms Peart said.

The assistant commissioner of trademarks said the relevant market would consist of people with a range of knowledge and experience concerning spirits.

She felt consumers would read information on the product's container and any relevant point-of-sale information to gain a basic appreciation of the nature of the alcoholic product, its alcoholic content and price unless they had prior knowledge of the product.

The assistant commissioner of trademarks said there were many brands of Scotch whisky, many of which did not start with the prefix Mc or Mac.

There were also a great number Scotch whisky brand names that did incorporate Mc or Mac, but in each case there was also reference to "Scotch whisky" on the label.

"The opposed goods are whisky-flavoured spirits and are not whisky.

If the opposed goods are not whisky, then it must follow that they will not be Scotch whisky," the assistant commissioner said.

Ms Peart said the Scotch Whisky Association had filed a notice of appeal to the High Court.

 

 

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