Whisky trade mark opposition requires stiff dram by the river Clyde
Mark Williams, Phillips Ormonde Fitzpatrick
IP Australia have dismissed a trade mark opposition by the Scotch Whisky Association against a trade mark for CLYDE RIVER in class 33 (alcoholic products). The trade mark application was filed by a self-represented trade mark applicant who did not participate in the opposition.
The Scotch Whisky Association raised as grounds of opposition, section 41 (trade mark not distinguishing of applicant’s goods or services), section 42 (contrary to law) and section 43 (trade mark likely to deceive or cause confusion).
The delegate was not persuaded on the section 41 ground noting that:
- A geographic name is not automatically unregistrable;
- the Opponent’s evidence detailing the use of the place name River Clyde/Clyde River at fourteen locations around the world was not persuasive. “none of these locales enjoy the iconic reputation, geographic size or population density of places such as ‘Michigan’ or ‘Colorado’”; and
- while it is possible the use of a geographic place name could lead to confusion, there was no evidence to show that this is likely. The evidence did not establish “that a rural estuary on the NSW far south coast is likely to become a center of production or distribution for the class of goods in the application. “
As to section 42, the delegate found that there was no evidence that the trademark Applicant would not comply with requirements regarding sale of alcohol or labelling or Geographical Indications, or use of a certification trademark (i.e. use of the certification trademark for Scotch Whisky).
Finally, in rejecting the section 43 ground, the Delegate noted:
- “‘Stalinskaya’ for Romanian vodka was permitted to be registered by the Federal Court on the basis that it is not uncommon that a trader would choose a trademark which would ‘connote an idea of Russianness’.”
- “….it does not correlate that for example a whisky trader would equally wish to connote an idea of Scottishness. Whisky is also produced in Ireland, Japan, America …. “
- “Whisky is associated with Scotland, but the protection afforded by the certification mark does not monopolise all Scottish sounding words.” The delegate noting that Geographical Indications are available to avoid this scenario arising in these types of disputes.
The delegate also rejected the opponent’s submissions that the trade mark applicant’s mark is clearly evocative of Scotland, the delegate observing that Australians are highly accustomed to seeing words that could be thought of as Scottish, for example ‘Perth’.
Author. Mark Williams, Special Counsel
 Scotch Whisky Association v Cristian Andrei  ATMO 172 (3 December 2019)