Scotch Whisky Association v Isetan Mitsukoshi Ltd: Trade Mark Deception & Geographical Origin

The Scotch Whisky Association appealed against the decision of the assistant registrar of trade marks dismissing its opposition against Isetan Mitsukoshi Ltd's application for the trade mark 'Isetan Tartan' in Class 33. The High Court of Singapore, on 28 August 2019, allowed the appeal, finding that the use of the 'Isetan Tartan' mark on non-Scotch whisky products would deceive the public as to the product's geographical origin, violating s 7(4)(b) of the Trade Marks Act. The court dismissed the other grounds of appeal related to the Geographical Indications Act.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal allowed on the ground that it is contrary to s 7(4)(b) of the Trade Marks Act as the mark, when used for whisky that is not Scotch whisky, is of such a nature as to deceive the public as to its geographical origin.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding the 'Isetan Tartan' trade mark. The court found it deceptive for non-Scotch whisky, violating s 7(4)(b) TMA, but dismissed other grounds.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Scotch Whisky AssociationAppellantAssociationAppeal allowed in partPartialThng Aaron, Christabel Lim
Isetan Mitsukoshi LtdRespondentCorporationAppeal partially lostPartialYvonne Tang Li Ling, Jaswin Kaur Khosa

3. Judges

Judge NameTitleDelivered Judgment
Lee Seiu KinJudgeYes

4. Counsels

Counsel NameOrganization
Thng AaronAmica Law LLC
Christabel LimAmica Law LLC
Yvonne Tang Li LingDrew & Napier LLC
Jaswin Kaur KhosaDrew & Napier LLC

4. Facts

  1. The respondent, Isetan Mitsukoshi Ltd, applied to register the trade mark 'Isetan Tartan' on 18 June 2016 under Class 33.
  2. The appellant, Scotch Whisky Association, opposed the registration on several grounds, including deception as to geographical origin.
  3. The appellant argued that tartan is an iconic symbol of Scotland and that Singaporean consumers recognize tartan as such an icon.
  4. The respondent argued that the mark 'Isetan Tartan' is not of such a nature as to deceive the public.
  5. Singapore has had an enduring association with Scotland, with evidence suggesting contemporary familiarity with tartan and Scotland.
  6. The court found that there is a strong association between tartan and Scotland, as well as the public’s familiarity with Scotland and tartan.

5. Formal Citations

  1. Scotch Whisky Association v Isetan Mitsukoshi Ltd, Tribunal Appeal No 5 of 2019, [2019] SGHC 200

6. Timeline

DateEvent
Respondent applied to register the trade mark “Isetan Tartan”
Appellant filed its notice of opposition
Judgment reserved
Judgment issued

7. Legal Issues

  1. Deceptive Trade Mark
    • Outcome: The court held that the 'Isetan Tartan' mark, when used for whisky that is not Scotch whisky, is of such a nature as to deceive the public as to its geographical origin, violating s 7(4)(b) of the Trade Marks Act.
    • Category: Substantive
    • Sub-Issues:
      • Deception as to geographical origin
  2. Use of Geographical Indication
    • Outcome: The court held that the respondent did not use a geographical indication within the meaning of s 2 of the Geographical Indications Act.
    • Category: Substantive
  3. Trade Mark Containing Geographical Indication
    • Outcome: The court held that the trade mark did not contain or consist of a geographical indication.
    • Category: Substantive

8. Remedies Sought

  1. Prevention of Trade Mark Registration

9. Cause of Actions

  • Trade Mark Infringement
  • Opposition to Trade Mark Registration

10. Practice Areas

  • Trade Mark Registration
  • Intellectual Property Litigation

11. Industries

  • Retail
  • Alcoholic Beverages

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
TARTAN GLORY Trade MarkUK Trade Marks RegistryYes[2000] BL O/003/00United KingdomCited as an example where the UK Trade Marks Registry disallowed the registration of a mark containing the word 'Tartan' for whisky products due to its strong association with Scotland.
Smirnoff TrademarksN/AYes[2006] RPC 16N/ACited for the principles on the degree of public deception required for s 7(4)(b) of the TMA to be triggered, emphasizing that the deception must be sufficiently serious and likely to affect the economic behavior of the public.
Scotch Whisky Association v KlotzEuropean Court of JusticeYes[2018] Bus. L.R 1466N/ACited by the appellant to argue that the word 'use' should include other forms of use than direct 'use', but the court rejected this argument, stating that the decision does not shed any light on the scope of the word 'use' under the GIA.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Geographical Indications Act (Cap 117B, 1999 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Tartan
  • Scotch Whisky
  • Geographical Indication
  • Deception
  • Trade Mark
  • Isetan

15.2 Keywords

  • trade mark
  • geographical indication
  • deception
  • Scotch whisky
  • tartan
  • Isetan

16. Subjects

  • Trade Marks
  • Geographical Indications
  • Intellectual Property

17. Areas of Law

  • Trade Marks Law
  • Intellectual Property Law
  • Geographical Indications Law