“Tartan” whisky: Is it a geographical indication?

The Scotch Whisky Association was unsuccessful in disputing the registration of trademark  in respect of goods such as whiskies by Japanese retailer, Isetan Mitsukoshi Ltd. at the Intellectual Property Office of Singapore recently. This case marks the first time the Geographical Indications (GI) Act was considered at IPOS since it came into force in 1999.

The Scotch Whisky Association is an association of the leading distillers, blenders and exporters of Scotch Whisky, with a key objective to protect the global Scotch Whisky trade, while Isetan is a well-known department store here in Singapore. The association argued that as trademarks cannot be registered if it contains a GI,  cannot be registered as “Tartan” is an iconic symbol of Scotland and can function as a whisky GI.

IPOS’ Principal Assistant Registrar, Ms Tan Mei Lin, rejected the argument, holding that the relevant issue is whether “Tartan” is a GI in the first place. GIs are used to identify goods with a given quality, reputation or other characteristic attributable to their origin. However, there was no evidence that “Tartan” is used to identify whiskies, or show what characteristics “Tartan” whiskies possess, and the association’s opposition failed.

The Opponent further claimed that the Mark should not be registered as the use of the Mark is prohibited in Singapore by the GI Act. However, the GI Act only protects GIs that are protected in their country of origin. As the association failed to show that “Tartan” is protected as a GI in the UK, they also failed on this ground.

The full grounds of decision can be found at https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2019/the-scotch-whisky-association-v-isetan-mitsukoshi-2019-sgipos-4.pdf.