Whiskey distiller loses trademark infringement appeal against developers of proposed retail park nearby

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Artist’s impression of the proposed commercial development

The Inner House of the Court of Session has dismissed a whiskey distillery’s appeal against a judge’s decision not to issue a ban in a trademark infringement case against another company proposing to develop a retail site in a village near the distillery.

Tomatin Distillery Company Ltd objected to the name “Tomatin Trading Company” used by the defendant on the grounds that it infringed its trade mark and made another allegation of deception. After some evidence, the trial judge found that they had failed to establish either part of his case.

The appeal was heard by the Lord President, Lord Carloway, seated with Lord Woolman and Lord Pentland. Lake QC and Mitchell, Solicitor-Lawyer, appeared for the Collector and McBrearty QC and Tariq, Solicitor, for the Respondent.



niche brand

The Respondent had purchased land on Route B leading to the village of Tomatin located several hundred meters from the Tomatin distillery operated by the Collector, on which it intended to build a retail park. It was noted that within the village, several businesses used the word “Tomatin” as part of their business name, with the name also being used by the train station, golf club, primary school and sports team. local soccer.

The Pursuer and Recoverer first registered a trademark for ‘Tomatin’ in relation to Scotch whiskey in 1963. In 2018 he obtained two further trademarks in relation to alcoholic beverages, retail, education and bar and entertainment services (Classes 33, 35, 41 and 43), which were declared invalid by the trial judge. In 2019, the Respondent sought to register its own mark “Tomatin Trading Company” in several classes, some of which were covered by the Recoverer’s marks. At the Recoverer’s request, the Respondent withdrew Class 33 (Scotch Whisky) from its application.

Expert evidence was given in evidence by a whiskey expert, Mr Russell, who said Tomatin single malt was “a niche brand in a niche market” with a low position in overall sales of scotch whisky. In addition, the defender relied on the defense of “honest practices” under the Trade Marks Act 1994argued that the action was premature as the development had not yet been built and that there was no likelihood of confusion as the companies located in the development would be trading under their own names.



It was argued for the Recoverer that the conclusions reached by the trier of main facts were subject to review. She asked the court to determine four questions: whether the 2018 design mark was invalid due to bad faith, whether TTC’s sign infringed the mark and, if so, whether its use was consistent with fair use. and whether the court had the discretion to refuse the ban. if the offense is established.

Geographic descriptor

Expressing the opinion of the court, Lord Woolman observed: “Many disputes are characterized by uncertainty. But this case involves a higher degree than most. The development is not built. It is unclear if and which franchises TTC will attract. It is unclear what goods and services they will offer, and under what name. Covid further complicated the picture.

As to whether the Reclaimer registered its 2018 marks in bad faith, he said: “It was up to TTC to establish bad faith. It’s a high test. He has not been encountered here. Seeking and obtaining trademark protection was to be expected. Intellectual property is the first asset of the distillery. It could be seen as acting in accordance with commercial prudence. Its shareholders could have leveled legitimate criticism at its directors had they not ordered a filing.



Addressing any risk of confusion between the marks, Lord Woolman noted: “The intellectual property judge found that the average consumer of the distillery’s goods and services was a whiskey enthusiast or explorer. Such a person is perceptive about single malts and is unlikely to be confused. We agree. The Intellectual Property Judge did not err in considering the average consumer of the Distillery’s goods and services, as opposed to the average consumer of TTC’s goods and services.

He went on to say, “Consumers less familiar with single malts, such as those who can tour the TTC development, would readily distinguish between the parties’ respective goods and services. They would understand that ‘Tomatin’ is a geographic descriptor. The addition of ‘Trading Company’ emphasizes the clear line between the sign and the brands.

Lord Woolman concluded: “We reaffirm that this is a contrived discussion. It takes place under a cloud of uncertainty. Currently, TTC only uses the name for development as a whole. It is common practice. An example is the Gyle Shopping Center in Edinburgh. The important point is that TTC does not use its name in connection with any goods or services. It is not yet known what will be offered, or by whom. No comparison exercise is therefore possible.

The request for a claim was therefore rejected, the previous interlocutor varying only to a limited extent with respect to the finding of bad faith.



A statement from The Tomatin Trading Company read: “Finally, we have the Court of Appeal’s decision dismissing Tomatin Distillery’s appeal against Lady Woolfe’s initial verdict. The Tomatin Trading Company is more than happily relieved that justice and common sense have finally prevailed.

“The appellate judges concluded that there was no guarantee for the Tomatin distillery – described as producing a niche brand in a niche market – to have a monopoly on the use of the word Tomatin for products other than whisky.

“We look forward to putting this deal firmly behind us, and can now complete our financial structuring with real confidence, as we set about the very important task of starting – and delivering – this important new development for Tomatin – and the Highlands in broad sense – domains”.

A spokesperson for Tomatin Distillery said: “While we are disappointed that Lord Woolman has upheld the original decision regarding trademark infringement, we are delighted that the judgment regarding our trademark registrations has been set aside. We are pleased to be able to now put an end to this matter and, as always, to remain committed to creating a thriving community here at Tomatin.


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