Protecting Scotch whisky abroad

Imitation may often be seen as flattery. However in the case of Scotch whisky, only certain characteristics allow spirits to authentically trade as Scotland’s national drink. These protections are important tools for preserving and enhancing the reputation of Scotch whisky abroad.

Scotch whisky holds significant economic value globally: it is the world's number one internationally traded spirit, with exports in 2023 exceeding GBP5 billion¹. Protecting this position presents a challenge to industry bodies such as the Scotch Whisky Association (SWA), who look to ensure that this value is not diluted by international manufacturers trading on Scotch whisky characteristics.

Recently, the Scotch whisky trademark was upheld by the courts in South Korea, where a producer was selling a whisky, trading as “Dian The Legend Scotch Whisky”, but which had been produced in Jordan.

In this article, we examine the protections available to preserve the authenticity of Scotch whisky at home and abroad; providing a brief overview as to how these protections operate in practice for the benefit of consumers, producers and investors, as well as the industry more widely.

This article is part of a series, please visit our Scotch whisky homepage.

What protections exist?

As set out in our previous article, provenance of Scotch whisky holds the key to its value. Protections for this provenance have continued to develop and expand internationally as Scotch whisky exports grow.

There are a number of mechanisms that can be called upon to protect Scotch whisky in global markets.

Protections within domestic legislation

Scotch whisky has held a statutory definition in the UK since 1933, requiring production in Scotland, and that the product be distilled from only cereals, water and yeast, and be matured in oak barrels for at least three years. This definition has been expanded and further codified in The Scotch whisky Regulations 2009, setting out key elements of the production process which must be fulfilled in order to be sold as Scotch whisky.

This domestic protection in the UK is key to the success and development of the domestic industry which supports 41,000 jobs in Scotland². However, given the export power that Scotch whisky enjoys globally, it is the recognition of this definition in key international markets which presents value to producers and investors.

International protection of Scotch whisky through domestic law is not new. Scotch whisky's first GBP1 billion export market, the United States, has afforded protection to Scotch whisky by upholding the UK statutory definition in the Federal Code since the 1960s.

Where recognition in overseas domestic legislation has not been achieved, Intellectual Property (IP) provides an avenue to ensure that only producers of Scotch whisky, in line with the UK definition, can claim to be so.

Geographical indications

Geographic Indications (GI), primarily utilised for food and drink products, have been developed as an important IP tool to protect the origins of a product based on its distinctive qualities. Recognised by the World Trade Organization (WTO) in 1994, GIs are “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”³ Scotch whisky, with its requirement for production in Scotland, falls within this category of IP protection in international trade.

Whilst WTO members are obliged to protect GIs in line with the Agreement on Trade-Related Aspects of Intellectual Property Rights, there is no WTO consensus as to how GIs are to be upheld and protected locally.

Some countries have elected to adopt a GI register. The EU presents one of the most sophisticated examples of GI registration and protection, and the UK has recently developed its own GI scheme to recognise Protected Designation of Origin, Protected Geographical Indication, and Traditional Specialities Guaranteed⁴.

Scotch whisky appears on the GI register of over 70 countries, most recently in Cambodia and Indonesia. Producers of Scotch whisky have used GI certification to challenge spirits which do not possess the required Scotch whisky characteristics. Importantly, this protection includes the use of branding and labelling which could mislead consumers to believe the product was produced in Scotland.

As an example in practice, in 2019, the District Court of Hamburg prohibited the use of “Glen” in the name of a German whisky, due to its infringement of the GI protection for Scotch whisky on the basis that it provided a false or misleading indication as to the origins of the product. The German court was satisfied that the average EU consumer could be under the impression that, due to the use of the word “Glen”, the spirit was Scotch whisky. This interpretation, which is wider than the opinion delivered by the Court of Justice of the European Union on this point, demonstrates the strength of GI protections.

Certification Trademark and Collective Trademark registration

Where sufficient protection cannot be relied upon through GIs, pursuing recognition at a domestic level through the trademark of Scotch whisky characteristics presents a route for enforcement, depending on local IP laws.

The SWA has pursued trademark certification for Scotch whisky across a number of jurisdictions, including, most recently, in Hong Kong in 2023. These certifications, like GIs, protect Scotch whisky from “like” products; requiring whisky to be produced in Scotland in accordance with the UK’s definition.

The SWA has experienced success when relying on these trademark certifications. Most recently, in April 2024, the SWA was successful in preventing the sale of counterfeit Scotch whisky in South Korea, following the trademark certification granted in the country in 2019. The Busan District Court held that a whisky, trading as “Dian The Legend Scotch Whisky” and having been produced in Jordan, infringed the Scotch whisky trademark. Subsequent fines and imprisonment were imposed on the producers of the product.

The success of this recent challenge indicates not only the importance of pursuing these protections at a domestic level, but the importance of robust mechanisms that can be relied upon to protect IP in global markets. These protections are ultimately only as strong as the domestic legal process of the countries in which they are imposed.

Comment – why protect?

Robustly protecting Scotch whisky through these mechanisms helps to safeguard Scotland's largest food and drink export by preventing the erosion of this product as a premium spirit. The mechanisms help to ensure the value of Scotch whisky for producers, consumers and investors.

These protections afford the industry the opportunity to protect the reputation of Scotch whisky, particularly in emerging markets such as South Korea where market share is in its infancy.

The UK Government has also used the value of Scotch whisky, and its protections, as leverage within trade negotiations. The opportunities presented by a UK-India Free Trade Agreement, where the removal of current tariffs on Scotch whisky could grow exports to India by GBP1 billion over 5 years, presents valuable negotiating power.

Without these protections, Scotch whisky producers must rely on the established domestic law IP protections - such as “passing off”. Defining clear parameters for the characteristics of Scotch whisky through agreeing the adoption of domestic legislation, GI registration and / or certification of a trademark present a more reliable, robust process for maintaining Scotch whisky characteristics at a global level.

Of course, reliance on these protections in the global market requires regular monitoring to identify and challenge imitation products before any damage is done. Taking quick action to enforce these protections once a counterfeit is identified is essential.

DLA Piper and our Scotch whisky team has experience of advising clients across the globe in the distilled spirit sector and would be pleased to discuss any issues which arise from this article.