Is “ISETAN TARTAN” deceptive if used for whiskies not from Scotland? A look at the Scotch Whisky Association’s opposition in Singapore
In 2016, Japanese retailer Isetan Mitsukoshi Ltd (Isetan) applied to register ‘ISETAN TARTAN’ for a total of 18 Classes of goods and services. The application was opposed by the Scotch Whisky Association (SWA) in Class 33 which covered a broad claim to alcoholic beverages, including whisky.
After successfully defending the opposition before the Intellectual Property Office of Singapore (IPOS), the application has now been corked by the High Court, on the basis that “ISETAN TARTAN” (Mark) would be deceptive if used on non-Scottish whisky products.
The key points of interest were:
Is “ISETAN TARTAN” deceptive?
SWA relied on Section 7(4)(b) of the Trade Marks Act (TMA) as a ground of opposition, which prohibits registration of a mark of such nature as to deceive the public, for example as to the geographical origin of the goods or services applied for. Hence, the main issue was whether use of “ISETAN TARTAN” for whiskies, which do not originate from Scotland, would deceive the public in Singapore.
The IPOS’ Registrar decided that the use of the Mark for non-Scottish whiskies would not deceive the public as it does not cause an expectation that the goods originate from Scotland.
Assessing “ISETAN TARTAN” as a whole, the Registrar found that it does not contain any symbols or designs representative of Scotland and there is nothing in the Mark that makes a direct reference to Scotland. Further, she regarded “ISETAN” to be a house mark of the Japanese retailer, which would likely evoke Japan more than Scotland.
High Court Decision
In comparison, the High Court decided that the use of “ISETAN TARTAN” for whiskies not from Scotland would be deceptive, based on a finding of a strong association between the word ‘tartan’ and Scotland, as well as the public’s familiarity with Scotland and tartan.
In response to the argument that “ISETAN” evokes Japan rather than Scotland, which the IPOS’ Registrar had found favour with, the High Court judge instead held that an average consumer is unlikely to think that all of Isetan’s varied products originate from Japan. In particular, the judge opined that whisky consumers would attach more weight to “TARTAN” than “ISETAN” because they would be ‘particularly familiar with Scotland and its tartan’.
As such, the judge held that “ISETAN TARTAN” should not be registered in Class 33.
Is ‘ISETAN TARTAN’ a Geographical Indication?
SWA also relied on section 7(7) of the TMA, which bars registration of marks containing a Geographical Indication (GI) for wines or spirits, if such mark would be used for wines or spirits not originating from the place indicated. Further, SWA relied on section 7(5) of the TMA read with section 3 of the Geographical Indications Act (GIA), which together bar registration of a mark if it involves use of a GI for goods which did not originate in the place indicated by the GI, in a manner which misleads the public as to their geographical origin.
Both tribunals dismissed these grounds of opposition as “ISETAN TARTAN” and “TARTAN” do not meet the definition of GIs in the GIA, namely indications which identify goods originating from a place, where a given quality, reputation or other characteristic is essentially attributable to their origin. In this case, there was no evidence of the Mark being used to identify the origin of the goods or their characteristics. The judge also stated that “TARTAN” is especially associated with Scotland but does not denote a particular place.
At the High Court hearing, SWA’s counsel also argued that the Mark comprises indirect use of the GI “SCOTCH WHISKY”. In response, the judge clarified that ‘use’ does not include indirect commercial use or evocation under the GIA.
As SWA was unable to show that use of “ISETAN TARTAN” or “TARTAN” amounted to use of a GI, the grounds of opposition based on sections 7(7) and 7(5) of the TMA were dismissed.
Conflicts with prior marks and issues of distinctiveness are often a trade mark owner’s main concerns in securing registration, but this opposition highlights the risk of refusal on the ground of deceptive nature, even if the mark does not expressly designate any particular location. In these situations, a useful option may be to consider and the incorporation of a distinctive house mark, but even so such an invented element could nonetheless be outweighed by the ‘deceptive’ indicia.