September 2008
A Wee Dram in China
Scotland’s whisky industry has now been recognised in China by the inclusion of WHISKY (and its translation) as a collective trademark in China, following an application by the Scottish Whisky Association (SWA). The SWA shipped 17 million bottles to China last year.
The inclusion of Whisky as a ‘Geographical Indication’ is the highest protection available to international trademark owners, and prevents anyone else using the term Whisky, allowing only Scottish made products to indicate the name and designate its origin. This has pleased the SWA who had been concerned about the number of imitation products available in China and will now enable Court cases to be pursued against infringers.
A Geographical Indication is defined in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) as “Indications which identify a good as originating in the territory of a Member, or a region of locality in that territory, where has a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”
TRIPS prevent the use of geographical indications which suggest or indicate that a product originates in a geographical area other than the true place of origin, in a manner which misleads the public as to the geographical origin of the product, or constitutes an act of unfair competition. Current UK legislation prevents the registration of any trade marks that serve to indicate geographical origin, which must be filed as certification or collective marks.
Other examples of geographical indications include the obvious Champagnefor wine produced in the Champagne region of France, Parma ham in Italy, and Bohemiafor crystal made in the Czech Republic.
A geographical indication points to a specific place, or region of production, that determines the characteristic qualities of the product which originates from that place. It is therefore important that the product obtains its qualities and reputation from that place. Since the qualities depend on the place where the products are made, there is a specific link between the products and their original place of production. Unlike trade marks, the name used as a geographical indication will usually be dependent upon the name of the place where the product is produced.
Each trader who produces their product from within the region is entitled to use the name and can share in the goodwill associated with the product. Any unauthorised use can result in sanctions ranging from injunctions, damages, fines or imprisonment.
Where a geographic term however is used as the common designation of a kind of product rather than an indication of the place of origin of that product, then the term no longer acts as a geographical indication. When this occurs, certain countries may refuse to recognise or protect that term. This occurred to Colognethat now relates to perfume regardless of whether it derived from Cologne in France.
Briffa Says
This decision will provide Scottish Whisky with significant intellectual property protection in the Far East and China’s significant emerging economy. Whilst this will boost the reputation of Scottish Whisky abroad, the difficulty may be in enforcement. The Scottish Whisky Association and its collective members may have the means to bring action against infringing companies, however significant resources will be necessary in identifying those companies responsible and actually prosecuting effectively.
For more information contact info@briffa.com