29th July 2018 - Sam Gilbert

A Major liquor group – D’Aquino Bros Pty Ltd – is facing charges made against them in the Federal Court by Scotch Whisky Association (SWA) for selling ‘fake’ scotch whisky.

The charges have been made against D’Aquino Bros Pty Ltd and seven other parties, including well-known liquor merchant Mr Liquor. SWA are seeking damages in respect of what they describe as “flagrant” infringement of the “Scotch Whisky” trade mark. As well as seeking an award for damages, SWA is further pursuing a permanent injunction from the court to prevent D’Aquino Bros Pty from selling any “Scotch Whisky” or “Scotch” labelled products in the future.

The Scotch Whisky Trade Marks

The SWA are the governing body of the “Scotch Whisky” and “Scotch” brand in relation to the famous liquor – Scotch Whisky. Scotch Whisky is a certification trade mark, meaning that its purpose is to identify goods that possess a particular standard or characteristic. The trade mark ‘Scotch Whisky’ was registered in the name of The Scotch Whisky Association on 20 December 2012 in class 33 claiming Spirits and spirit based beverages.

A certification trade mark identifies goods or services that have met a standard or characteristic such as quality, content, method of manufacture and origin of manufacture. The registered owner of a certification trade mark has the exclusive right to use and to allow others to use the certification trade mark. The use of a certification trade mark must be in accordance with the rules governing its use. A certification mark is generally licensed to third parties referred to as “Approved Users” permitting such parties to apply the certification mark to their goods and services.

In order for a certification trade mark to be granted, the Australian Competition and Consumer Commission (ACCC) must first assess whether the certification meets the test as set out under part 16 of the Trade Marks Act 1995 (Cth). In the case of ‘Scotch Whisky’, the SWA state that to obtain certification, every Scotch Whisky that is labelled as such must be of a certain colour, possess a certain aroma and taste, contain at least 40% alcohol, and of course be distilled in Scotland. In short, Scotch Whisky means the spirit which complies with the SW Regulations by meeting standards as to content, method of manufacture, geographic origin and quality.

 The Alleged ‘Fake’ Products

The alleged fake products include “J.B.R Scotch Whisky”, “The Clansmen Scotch Whisky” and the “Black Scot Scotch Whisky”. According to a report by the ABC last month, lab results conducted on samples of the “Black Scot Scotch Whisky” suggest that the liquor had not been distilled in Scotland.

Previous Infringement

 This is not the first time that the SWA have brought proceedings against D’Aquino Bros Pty Ltd for infringing the Scotch Whisky brand name. In fact, this is the fourth time that an action has been taken against D’Aquino Bros Pty Ltd for trade mark infringement, which would seem to support SWA’s claim that the infringement amounts to flagrant disregard of SWA’s intellectual property rights.

The Road Ahead

 The case – THE SCOTCH WHISKY ASSOCIATION v D’AQUINO BROS PTY LTD & ORS – is set to be first heard on 3 August 2018, so stay tuned for further details.

Take away points:

•  Know the Rules of Use for a certification trade mark;
• If you’re a fan of ‘Scotch’ make sure you’re drinking the real stuff;
• If an injunction is granted against D’Aquino Bros Pty Ltd, look out for some cheap ‘Scotch’!

Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney

 If you would like to know more about this article or the laws that regulate certification trade marks, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.