Case study

UKTI helps protect Scotch Whisky trademarks in China

Scotch Whisky Association successfully challenges IP infringements in China and secures GI status with help from UKTI and the UK’s IP Attaché.

Scotch Whisky
Scotch Whisky

UK Trade & Investment (UKTI) and the UK’s Intellectual Property (IP) Attache in Beijing have helped the Scotch Whisky Association (SWA) create levels of protection around Scotch whisky in China. This has included successfully appealing the use of the word ‘glen’ in 12 trade mark registations in China and securing its registration for Geographical Indication of origin (GI) status.

Lindesay Low, SWA Legal Adviser says,

UKTI are a key asset to the SWA and we owe them a large part of the credit for our success in appealing trademarks and securing GI registration in this market.

Counterfeit Scotch Whisky

Scotch Whisky is a great UK export success story. It generates £4.3 billion in export revenue, a quarter of the total value of UK food and drink exports. It’s sold in over 200 markets worldwide. However there are many cheap imitation whiskies produced around the world.

Lindesay Low says

Not surprisingly, there can be lots of imitation whiskies when sales of Scotch Whisky are growing quickly as fraudsters want to cash in on the boom.

Similarly, when there is an economic downturn and price becomes an important factor for consumers, the market for cheap fakes grows.

Scotch Whisky producers spend years perfecting their product, but these counterfeits harm the industry by:

  • lowering sales of bona fide Scotch
  • putting people off buying the real thing after they’ve unwittingly tried the inferior quality fake product
  • deterring people from buying anything purporting to be Scotch, for fear of getting the fake

The SWA has 5 full time lawyers on its staff to help fulfil its role in protecting, promoting and representing the industry at home and overseas. Their main function is taking legal action to restrain the sale of other spirits misleadingly labelled to suggest they are Scotch Whisky.

Read the Intellectual Property Office’s (IPO) guide on Intellectual Property Rights in China.

Find out more about UK-China cooperation on intellectual property.

The ‘glens’ of China

The SWA’s work opposes the registration of trademarks that are suggestive of Scotland. One of its most frequent actions is against trademarks that incorporate the word ‘glen’.

In each case the SWA files a detailed dossier of evidence, including lists of Scottish place names, distilleries and genuine Scotch Whisky labels that contain the word ‘glen’.

Lindesay Low says,

Misappropriation of a word like ‘glen’ to suggest that a whisky not produced in Scotland is authentic Scotch is an issue that we are combatting around the world.

However, the SWA struggled to successfully persuade Chinese local authorities to reject trademarks for products using the word ‘glen’. The reason given was that there was insufficient evidence to show that the word ‘glen’ was connected to Scotch Whisky.

Lindesay Low says,

The UK’s IP Attaché to China wrote a letter of support. This turned things around for us and since then, we have successfully appealed 12 trademarks.

The letter confirmed that ‘glen’ is a genuine Scottish word and the SWA as the official representative of Scotch Whisky producers, and therefore entitled to make an application on their behalf. This turned things around with the Chinese authorities.

The SWA then appealed each case to the Chinese Trade Mark Review and Adjudication Board (TRAB), with the help of the British Embassy’s IP Attaché.

Lindesay Low says,

When we first got involved with China, this was a new and unknown market for us.

The British embassy and UKTI helped us to understand how things work there and who we needed to speak to about the issues that concerned us and our members.

Geographical Indication of origin

The British Embassy and UKTI also helped the SWA apply for GI registration in China as a second layer of protection for Scotch Whisky.

A GI is a name or sign which identifies a product as coming from a specific geographical location and where the product has certain qualities, or enjoys a certain reputation, due to its geographical origin.

When this was granted, UKTI arranged for Dr Vince Cable, Secretary of State for Business, Innovation and Skills, to be present for the official announcement by the Chinese authorities.

Lindesay Low says,

We relied on the British Embassy and UKTI a lot for practical support and advice and guidance on legal matters with acquiring the GI registration.

They have also given us a platform to discuss the issue more widely. I don’t think we would have achieved as much in China without their invaluable help.

UKTI are a key asset to the SWA and we owe them a large part of the credit for our success in appealing trademarks and securing GI registration in this market.

Raising awareness

The British embassy in Beijing and the Chinese Development Research Centre of the State Council jointly organised a conference on the subject of GIs in October 2013.

It was attended by a wide range of Chinese GI producers’ associations as well as Western representatives of products such as Champagne. Lindesay was invited to address the delegates, raising awareness of this important issue and sharing the SWA’s experiences.

Contacts

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Fast facts

Company Scotch Whisky Association
Industry Food and drink
Target Market China
UKTI Services Advice and Guidance, In-market support
Website www.scotch-whisky.org.uk
Published 3 September 2014