UK: The Scotch Whisky Association - ROYAL DOUGLAS And KING ARTHUR

The Scotch Whisky Association, the SWA, is the trade association for the Scotch Whisky industry. The SWA has 75 member companies including distillers, blenders and owners of the leading international brands of Scotch Whisky. Its mission is to drive the best possible global business environment for Scotch Whisky.

Protecting Scotch Whisky

The key objective for the SWA's legal team, made up of five lawyers and a paralegal, is to protect Scotch Whisky and prevent unfair competition. The popularity of Scotch Whisky means that there are many people around the world who want to take advantage of it including by 'passing off' a product as Scotch Whisky when it is not. Such an imitation threatens the integrity of Scotch Whisky and a reputation built up over hundreds of years. It also undermines consumer confidence in genuine brands. For the last 70 years, the SWA has taken action throughout the world to restrain the sale of whiskies and other alcoholic products, the labelling of which is likely to deceive purchasers into believing the products are Scotch Whisky, when they are not.

Case study - ROYAL DOUGLAS and KING ARTHUR - South Africa

There are many ways to take unfair advantage of the reputation of Scotch Whisky. The most obvious way of marketing a spirit to suggest that it is Scotch Whisky when it is not, is use of the description "Scotch Whisky" itself. However, in many cases, rather than misusing that description, producers adopt a subtler approach and will often try to suggest that their products are Scotch Whisky by using indirect indications of Scottish or UK origin. It was this type of misuse that the SWA recently successfully dealt with in South Africa, Scotch Whisky's largest export market in Africa.

In 2015, the SWA was alerted to the sale of two products in South Africa called ROYAL DOUGLAS and KING ARTHUR. The SWA was concerned about the ROYAL DOUGLAS product due to use of the word "DOUGLAS" (a Scottish clan) in the brand name and as part of a fake company name, as well as the use of tartan, whilst the KING ARTHUR product had a brand name associated with the UK. Both products were described as "whisky flavoured spirit aperitifs".

The SWA was concerned about this description because the product was also being passed off as whisky. Scotch Whisky should not have to compete with products described as "whisky" which do not comply with the definition of whisky in the market in which they are sold.

The SWA arranged for a sample of ROYAL DOUGLAS to be purchased locally and for it to be sent to The Scotch Whisky Research Institute, the SWRI, for chemical analysis. The SWRI is an internationally accredited specialist laboratory established by the Scotch Whisky industry tasked with carrying out research and authenticity analysis. The SWRI concluded that the spirit was not Scotch Whisky and not whisky produced in accordance with legal definition for whisky in South Africa. Whisky must have an alcohol strength of 43% according to the legal definition in South Africa but analysis concluded that the spirit actually had an alcohol strength of 34.98%, despite being marketed as 43.5%. In addition, the SWRI's sensory analysis concluded that the spirit had aromas of orange, pineapple and artificial apple, which are atypical of whisky produced in accordance with the South African whisky definition.

In 2017, the SWA raised passing off proceedings in the High Court of Pretoria against the producer and the SWA obtained a favourable decision from the court last year. However, the producer appealed to the Supreme Court, which has now issued its decision - again in the SWA's favour. The court found that the company had attempted to confuse or mislead members of the public or create an impression that the ROYAL DOUGLAS and KING ARTHUR products were whisky or Scotch Whisky. The court also found that the description "whisky flavoured" was misleading and in breach of South African law. Indeed, despite marketing the product as "whisky", the producer admitted that the spirit itself was in fact vodka based with additional colouring and flavouring, which itself wasn't whisky based.

In a strongly worded decision, the court held that "the choice of name, is and always has been designed to evoke a Scottish connection. These representations were undoubtably intended to create a clear and vivid impression on people seeing them, of an association with Scotland" [para 20] and that the company was "straining to associate their products as closely as possible with whisky and with Scotland and to continue to ride unashamedly on the coat-tails of that reputation" [para 28].

The company has been ordered to destroy the products and pay the SWA's legal costs.

Summary

This is the first time that the SWA has had a case before the Supreme Court in South Africa. It is a very important decision for the SWA's legal protection work not only in South Africa but in Africa generally since other jurisdictions there often look to the South African courts for guidance. Strong legal protection forms the foundations on which the industry's success is built and this case is just one example of the many ongoing legal actions that the SWA is currently handling around the world to protect the IP of Scotland's national drink.

If you become aware of a suspicious product on sale, please alert the SWA's Legal team - legal@swa.org.uk

Andrew Swift Legal Counsel, SWA

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