Protecting Scotch: The importance of IP to Whisky

Recent case law illustrates the importance of intellectual property (IP) to whisky, from the initial design concept to the protecting against lookalike products. This article delves into a few of the IP challenges that can arise throughout the life cycle of whisky.

Origin and heritage

As we wrote about in a previous article, the heritage and authenticity of Scotch whisky is recognised and protected on a domestic and international scale. Scotch whisky benefits from a unique type of IP right: a geographic indication (GI). This indication is recognised by the World Trade Organisation (WTO) and, in the case of Scotch, requires the whisky to have been produced in Scotland. GIs are recognised and protected by WTO members in line with the Agreement on Trade-Related Aspects of Intellectual Property Rights.

IP disputes can arise if a brand implies a certain heritage about their brand that isn't accurate. For example, the Scotch Whisky Association resolved a dispute which led to the Virginia Distillery Company dropping its use of the word “Highland” from its “Virginia-Highland Whisky” product range. And in 2022 a German brand, “Glen Buchenbach,” was found to be infringing the GI on the basis that using the word Glen was misleading and evocative of Scotch Whisky.

Production

The whisky industry is experiencing a rise in innovative production methods, many of which are protected by patents. Some of these patented techniques aim to accelerate the ageing process and enhance the quality of whisky through specific filtration processes.

But patenting whisky production methods isn't a new concept. The “Coffey still,” patented by Aeneas Coffey in the 19th century, revolutionised the industry by enabling continuous distillation. This method is still widely used in the whisky industry today.

Whisky producers have to ensure they get the relevant permissions from patent owners prior to use, or avoid using that method altogether for risk of infringing registered patents.

Registering your brand

Trade mark registration is essential for whisky producers to protect their brands. When considering an effective protection strategy, producers should think about every distinctive feature of their products, including names and logos, and other elements of their brand like bottle shapes, which third parties often consider ripe for copying. By way of example, Scotch whisky manufacturer Coleburn Distillery Limited owns registrations for the word “Coleburn” and has successfully enforced those rights against third parties.

Not only will registered rights give brands a means of enforcing against copycats (see below), strategic trade mark registrations will also provide owners with a way to prevent competitors from registering similar marks. In 2020, the producers of Eagle Rare bourbon whiskey filed a trade mark infringement claim against American Eagle bourbon whiskey, arguing that American Eagle's trade mark caused confusion and took unfair advantage of Eagle Rare's reputation. The claim succeeded on both grounds.

Lookalikes

Lookalikes are also a major concern for brand owners. Registered trade marks, designs, copyright, and unregistered rights will all play their part in providing brand owners with options to enforce against third parties. A recent example that shines a light on this issue was Thatchers' recent success in the Court of Appeal against a lookalike product of their cloudy lemon cider. This case highlighted the value of strategic trade mark protection for Thatchers' label, which the lookalike was found to have infringed.

Counterfeits and re-bottling

Efforts to tackle counterfeits and re-bottling are paramount, both to protect and maintain a brand's integrity and value, but also for reasons like consumer safety. The European Anti-Fraud Office has recently achieved some success. It seized approximately 40,000 litres of illicit alcoholic beverages across 15 EU member states.

Whisky producers are also using technology-based detection methods, such as blockchain and cryptography to verify a product's authenticity, adding yet another string to the bow of brand monitoring and enforcement options.

How we can help

DLA Piper's Scotch whisky team advises clients around the world in the distilled spirit sector and would be pleased to discuss any issues which arise from the terms of this brief guide.

Our IP team has extensive experience advising businesses on all issues related to brand protection. Some key areas include:

• IP clearance searches
• IP registration strategy and filings
• Online enforcement, including via the use of technology to detect infringing uses of your brand with automated takedowns
• Trade mark watching
• Investigations
• Cost-effective litigation to tackle key concerns for your business