The Scotch Whisky Association V. Isetan Mitsukoshi Ltd. [2019]

Legal News & Analysis - Asia Pacific - Singapore - Intellectual Property

13 March, 2019

 

This case concerns the trade mark ISETAN TARTAN (“the Mark”) applied for by Isetan Mitsukoshi Ltd. (“the Applicant”) in respect of goods such as whiskies (“the Goods”). 

 

The Scotch Whisky Association (“the Opponent”) opposed the registration of the Mark on 5 grounds: Sections 7(7), 7(5), 7(4)(b), 7(1)(b) and 7(1)(c) of the Trade Marks Act (Cap 332, 2005 Rev Ed). It failed on all grounds. 

 

On the ground under Section 7(7) which stipulates that “a trade mark shall not be registered if it contains or consists of a geographical indication…”, the Opponent contended that “the tartan is an iconic symbol of Scotland and can function as a geographical indication”. The Hearing Officer rejected the argument holding that the relevant issue is not whether “Tartan” can or cannot function as a GI but whether it is a GI. GIs by their very definition are indications which identify goods with a given quality, reputation or other characteristic attributable to their origin.

 

There was no evidence that “Tartan” is used to identify whiskies, neither was there evidence to show what characteristics “Tartan” whiskies possess. 

 

On the ground under Section 7(5) the Opponent contended that the Mark should not be registered as the use of the Mark is prohibited in Singapore by the GI Act. However, the GI Act only protects GIs which are protected in their country of origin. No evidence was lodged to show that “Tartan” is protected as a GI in the UK. Accordingly, the ground failed. 

 

The ground under Section 7(5) is interesting because this is the first time we are considering the GI Act since it came into force in 1999. This GI Act will however be repealed on 1 April 2019 when the new GI Act 2014 comes into force. 

 

The full grounds of decision can be found at https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2019/the-scotch-whisky-association-v-isetan-mitsukoshi-2019-sgipos-4.pdf