Scotch whisky naming dispute leads to rumbling in the Highland glens

Whisky aficionados (and IP lovers alike) will be engrossed by the news that Tomatin Distillery the producer of a delicious single malt Scotch whisky Tomatin, has just failed in a bid to limit the use of the word “Tomatin” by another local business.

The Scotch whisky brand is named after a lovely village between Inverness and Aviemore, and its moniker is being used by another to name a retail development with a sign featuring the word ‘Tomatin’.  There is a fear that further ‘Tomatin’ branded food and drinks products will follow.

This is a particularly important issue for whisky and gin producers in Scotland.

Just like Tomatin, many Scotch whisky and gin brands adopt the location of their distillery as part of their brand name. For what it’s worth, examples of Lagavulin, Laphroig and Ardbeg on the island of Islay are my personal favourites.

In many instances, such drinks brands put these small villages ‘on the map’, with global recognition and acclaim.

While the process of distilling whisky or gin does not always require large numbers of employees, these distilleries are increasingly destinations for lovers of the product with visitor whisky experience centres springing up.

These centres draw tourists to a village and, in addition to the spirits produced on site, will sell a range of branded products from glassware, clothing and accessories to shortbread.  In this way, the drinks producer needs to expand protection of its brand beyond just the whisky or gin it produces.

However, this decision from the Court of Session has shown the limits to the ability to monopolise the name of the village in which the distillery is based.

What’s in a name anyway?

Tomatin Distillery objected to a local business using the name of The Tomatin Trading Company for a proposed development including a hotel, shop and restaurant.

Tomatin Trading had applied for its own trade marks for a figurative sign which included the word ‘Tomatin’ in a prominent position. A wide range of trade mark classes were sought.

Whilst it was not the case here, we often see such cases in which there can be a perception that local businesses are seeking to unfairly free-ride on the hard-won drinks brand’s national or even global reputation.

Like the water to whisky, there is no doubt there can be a real risk that such conduct could dilute the value in the drinks brand.

In a whopping 235 page opinion, Lady Wolffe set out a very full analysis as to why the Tomatin Distillery was not entitled to prevent Tomatin Trading from using the “Tomatin” brand.

The case seemed to include pretty much every element of trade mark law and passing off, and included a chunky proof (trial). Tomatin Distillery threw everything at it and in many ways I have sympathy for what they were seeking to achieve. However, there are probably two elements which meant its claim was always likely to fail.

Firstly, it did not have the necessary protectable rights over the breadth of goods and services to be offered by Tomatin Trading. Perhaps this is something which might have been established over time if the necessary groundwork had been done as part of a brand protection strategy. That is, strategic trade mark filing and trading in a wider range of goods over a period of time to broaden its reputation.

On the evidence, Tomatin Distillery, established in 1985, was found to be a fairly small player in what is a mature and fragmented market, so the strength of its brand in its own sector was important. There was always going to be a limit as to how far it could extend beyond its core product.

On top of that, Tomatin Trading had not entered the core market in which the Distillery was trading. Interestingly, in dealing with the element of confusion, Lady Wolffe remarked that the average consumer (being any whisky aficionados reading this) had a relatively strong knowledge of the subject matter therefore are unlikely to be confused – perhaps as long as those aficionados had not enjoyed too much of the product they love at the time!

Secondly, Tomatin Distillery could not establish that Tomatin Trading had no “objective justification” to use the name. This comes down to the inherent difficulty in trying to establish rights over a place name. Perhaps, it would always have been difficult for Tomatin Distillery to overcome this obstacle.

Where does this leave us?

Does this decision mean that distilleries or other brands seeking to protect their geographic brand names are ‘on the rocks’? Absolutely not.

Lady Wolffe helpfully makes clear the tests which need to be met and where Tomatin Distillery fell short.

Key here would be for producers to adopt long-term brand protection strategies to ensure that they know what they can and cannot protect. Of real importance is to ensure that other local businesses understand what can and cannot be done with the place name.

Stock advice in brand protection is often to nip problems in the bud before they take root.  Perhaps this may be an unusual situation of the brand holder acting too quickly, before its own brand had matured in cask and in advance of it being able to establish that Tomatin Trading represented a real and significant threat.

Taking a glass half-full approach, it is great that we have more clarity on what such geographic brands need to do to protect their rights.

The IP team at Burness Paull are expert at advising on strategies to help clients build strength in their brands and, when necessary, enforce rights in them.  If you would like to know more about our work in this area please do get in touch.