Scotch Whisky Association (the appellant) is an association protecting the interests of leading distillers, blenders, and exporters of the Scotch Whisky trade worldwide. Isetan Mitsukoshi Ltd (the respondent) is a Japanese department store selling a variety of products, including alcoholic beverages.
The respondent applied for “Isetan Tartan” (the mark) in Singapore in Class 33 for all alcoholic beverages except beer; sake in 2016. The appellant opposed the mark relying on Sections 7(1)(b) and 7(1)(c) of the Trademarks Act (TMA), arguing that the mark was devoid of distinctive character and was descriptive, containing a geographical indication (GI). The appellant also relied on Section 7(4)(b) and argued that registration of the mark would deceive the public as to its geographical origin, and that registration of the mark would be contrary to Sections 7(5) and 7(7) of the TMA. The opposition action was dismissed by the Assistant Registrar on all grounds in March 2019.
On appeal to the Singapore High Court in May 2019, the appellant opposed the mark on the latter three grounds.
Section 7(4)(b) of the TMA
- The appellant produced evidence to establish two underlying facts: (1) tartan is an iconic symbol of Scotland and is used to signify a link to Scotland; and (2) Singapore consumers recognize tartan as a Scottish icon, to support its argument that registration of the mark would deceive the public as to its geographical origin. The evidence included a 2012 survey by an international market research firm, ranking tartan as Scotland’s third most recognizable icon, as well as historical facts, architectural structures, and tourism figures to demonstrate Singapore’s enduring association with Scotland.
- The respondent countered with the house mark principle, suggesting that consumers would view “Isetan” as the house mark and correlate it with “Japan” rather than Scotland. It also argued that the appellant failed to show a real or sufficiently serious risk or danger that a consumer would be so deceived.
- The court found a strong association between tartan and Scotland, and the Singapore public’s familiarity with both. It therefore found that the use of the mark on non-Scotch whisky products was sufficiently deceptive as to the product’s geographical origin and allowed the appeal on this ground.
Sections 7(5) and 7(7) of the TMA
- The court was not persuaded by the appellant’s argument on “use of a GI” under Section 7(5) of the TMA, read with Sections 3(2)(a), 3(2)(b), and 3(2)(c) of the GI Act, to include indirect commercial use or evocation of a GI, when it was manifestly obvious that what was being used was “Isetan Tartan”, for which the respondent sought registration.
- The judge opined that a GI should refer to a geographical location or place. He found that “tartan” was not a location or place and accordingly did not qualify as a GI. He rejected the appellant’s argument that apart from a place, other indicating terms would also qualify as a GI if they act as a source identifier for a particular territory, region, or locality.
By a decision rendered on August 28, 2019, the learned judge dismissed the appeal under Sections 7(5) and 7(7) of the TMA while allowing the appeal under Section 7(4)(b) of the TMA. Consequently, the mark was refused registration.
By: Denise Mirandah
This article was first published in INTA Bulletin, Vol. 74 , No.20. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.