The battle has its roots in 2009, when Mill Liquorsave filed a trademark application with the Intellectual Property Office of New Zealand (IPONZ) to call its white label whisky-flavoured spirit MacGowans.
Scots to the rescue?
In May 2010, the Scotland-based Scotch Whisky Association took the retailer on and filed its complaint with the same office, stating that consumers could be deceived into thinking that they were drinking actual Scotch whisky.
As per the office’s filings, the association said that Mill Liquorsave was unfairly taking advantage of a trade description by choosing the name and riding on the reputation of Scotch whisky.
Also part of its allegations was the accusation that the retailer that breached food laws in New Zealand with misleading labelling that presented a false geographic indication, which could infer the product may have been produced in Scotland.
In a counter filing, Mill Liquorsave argued that the association did not have proprietary rights to all Scottish-sounding words or names.
“To grant the opponent monopolistic rights in respect of all alcoholic beverages, where the name of the beverage could once have been considered Scottish, would be to grant rights in excess of what Parliament could have intended (in law),” the retailer’s filing said.
However, in a decision this week, Jennie Walden, the assistant commissioner of trademarks at IPONZ, did not agree with the association on any of the grounds it had filed its opposition on, awarding the retailer NZ$3,120 in costs.
Walden said in her decision that the adoption of a Scottish name for an alcoholic beverage would not be enough to mislead consumers, she said. She also remarked that while MacGowan could be a Scottish or Irish surname, it was not indicative of national identity, as there were many Kiwis with Scottish or Irish surnames. As such, the name likely referred to a person, not country, she said.
“The fact that Scotch whisky always appears with the whisky brand name confirms that a Scottish name alone cannot provide a concrete expectation that the alcoholic beverage is in fact Scotch whisky,” Walden said in her finding.
Both the retailer and the association did not respond to requests for comments.