Australian liquor company may not get off scot(ch) free

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia.  The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

In this case, the SWA has commenced proceedings against D’Aquino Bros Pty Ltd (D’Aquino) in relation to D’Aquino’s use of the mark SCOTCH WHISKY, which SWA has registered in Australia as a certification trade mark.

While conventional trade marks function as a badge of origin to distinguish the goods or services of one trader from another, a certification trade mark can be used by multiple traders to indicate that goods or services sold by reference to the mark possess certain characteristics, including (in the case of goods), original, material or mode of manufacture.  Applicants for certification trade marks must file a set of rules which govern the use of the trade mark, and those rules must be approved by the Australian Competition and Consumer Commission.  The rules are then made publicly available on IP Australia’s website.

The SCOTCH WHISKY rules specify, amongst other things, that whisky bearing the SCOTCH WHISKY mark must have been distilled in Scotland and must have an alcohol content of no less than 40%.

Media reports indicate that the SWA has commenced proceedings on the basis that D’Aquino has been using the SCOTCH WHISKY mark on whisky which has not been distilled in Scotland.  The proceedings are listed for a case management hearing on 3 August 2018.

Please contact us if you would like to learn more about certification trade marks.

By Alex Dunlop and Karen Liu