Hong Kong: Scotch Whisky Gains Certification Mark In Hong Kong SAR

1. Certification Mark (Hong Kong SAR requirements and protection)

As you may have  read last month, the Scotch Whisky Association (SWA) working with Rouse's Hong Kong SAR SAR team successfully registered SCOTCH WHISKY as a certification mark in Hong Kong SAR. As SWA deputy legal director Lindesay Low said at the time: "Hong Kong is an increasingly important market for Scotch whisky, with exports to the region worth more than GBP31m [US$39.2m] in 2022". For Scotch Whisky fans they can have confidence in the quality of the product they are buying and for whisky brand owners the certification will enable easier enforcement.

But what is a certification trade mark? It's a sign indicating a broad range of characteristics: that the goods or services in connection with which it is used are certified by the owner of the sign in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. In addition, the applicant for the registration of a certification mark in Hong Kong SAR must not carry on a trade or business involving the supply of goods or services of the kind to be certified.

The applicant is required to file a copy of the regulations governing use of the certification mark with the Registrar within nine months after the date of application for registration. The regulations must be accompanied by a Declaration of Competency which details the evidence of the applicant's competence to certify the goods or services for which the certification mark is to be registered.  Generally, the applicant must be of sufficient size, have a standing in the relevant trade, and have sufficient skills and resources to ensure that the certification is authoritative. The applicant must also show how it will supervise the use of the mark and that the goods and services concerned have the required characteristics.  The application process can take more than 20 months as the Hong Kong SAR Trade Mark Registry will review and issues rounds of observations on the application to ensure the suitability of the regulations and the sufficiency of the Declaration of Competency.

2. Comparison with other jurisdictions

Working with Rouse and other law firms, SWA has obtained registrations for the SCOTCH WHISKY mark in multiple jurisdictions as a collective mark, certification mark or geographical indication (GI). Below are selected Asia regions that recognize the SCOTCH WHISKY mark. In comparison with other Asia jurisdictions, Hong Kong SAR protects GIs by way of certification trade marks.

3. Protection by passing off before obtaining registration

Before the application for the SCOTCH WHISKY mark was granted, SWA would have needed to rely on the law of passing off for protection, which can be costly and time consuming. With the certification trade mark registration, SWA can now take legal action against unauthorised use of the SCOTCH WHISKY mark by simply relying on its certification trade mark registration.