Getting your facts straight at the start of a trade mark dispute can be invaluable – as shown in this case about a trade mark centred on one of Scotland’s most iconic lochs.
Background
Duncan Taylor Scotch Whisky Limited (the applicant) applied to invalidate six UK registrations. All of the registrations included the words “LOCH NESS”. The grounds for invalidation was that the brand LOCH NESS had been applied to whisky since 2008 by The Original Scotch Whisky Company Limited – a “sister company” of the applicant.
The Decision
The UKIPO rejected the application to invalidate the registrations. The hearing officer found that there was no significant evidence of the applicant using the brand LOCH NESS to sell whisky. A single example of an offer for sale from a website was dated 2019. Since this was after the registrations had been filed, it was too late to be effective. The hearing officer also found no real commercial link between The Original Scotch Whisky Company Limited and Duncan Taylor Scotch Whisky Limited. In fact, the only link between the companies seemed to be that they had one director in common. As a result, the applicant had not generated any goodwill (reputation) by using the LOCH NESS brand.
Descriptive Marks
One interesting question is whether the mark LOCH NESS is descriptive of the geographical origin of the products. This is relevant because descriptive marks are unlikely to have the level of distinctiveness needed for registration. The hearing officer noted that there may be some weight behind this argument. And the argument is especially relevant in the whisky industry, where the water from a particular location can be a key feature of the finished product.
The decision shows that LOCH NESS is a relatively weak trade mark – particularly with regard to spirits. Independent evidence submitted noted that there were “many LOCH NESS products out there”.
Take-Home
This case brings into focus the concept that a distinctive trade mark can be invaluable to any business. Having whisky associated with one of Scotland’s best-known lochs may appear to be very appealing from a marketing perspective, but more original branding can led to a much more distinctive mark. More importantly, it shows that good trade mark advice is needed before attempting to invalidate a competitor’s trade mark registration.
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