Scotland, Whisky and its Geographical Indications

The provenance of authentic Scottish produce has value in the global market. Scotch whisky, for example, is the world’s top internationally traded spirit with exports worth almost £4bn annually. That is a market share worth protecting and the Scotch Whisky Association consistently challenges anyone trying to capitalise on the international reputation of Scotch whisky to sell products manufactured elsewhere.

The latest alleged infringement is by a distillery in British Columbia, Canada. The Scotch Whisky Association is contesting Macaloney’s Caledonian Distillery’s use of a series of terms including ‘Caledonian’, ‘Glen’, ‘Inver’, and ‘island whisky’ which are closely associated with Scotch whisky.

The case has yet to be determined but it raises the question of how we protect Scotland’s domestic produce and what happens if someone tries to replicate a protected product elsewhere?

Geographical Indications protection

Most people will be familiar with the concept of geographically protected products. Geographical indications (“GIs”) establish intellectual property rights for specific products whose qualities are linked to the area of production. Famously, champagne must be produced in the Champagne region of France, whilst Scotch whisky must be produced in Scotland. The designation “Scotch Whisky” is one of 14 Scottish product names to attract geographical protection. This protection was previously established under EU law but, post-Brexit, the new UK Geographical Indications regime now applies.

Products with existing protection under the EU scheme were granted equivalent UK protection under the new UK GI scheme; going forward, however, GB producers must secure protection for any new products under the UK GI schemes before applying to the EU schemes. New products of EU origin will also need to apply separately to the EU and to the UK GI schemes.

There are four UK GI schemes. These cover agricultural products and foodstuffs (under the protected food names (PFN) scheme), spirit drinks, wines and aromatised wines. Three geographical indication designations are available:

1. Protected Designation of Origin (PDO) is for food, wine and agricultural products which have qualities and characteristics which are essentially due to the location where they are produced. An example is “Orkney beef” which applies to beef products from cattle reared on Orkney and prepared using traditional methods.
2. Protected Geographical Indication (PGI) applies where there is a relationship between the specific geographic region and the reputation of the product. For example, the “Scotch beef” label indicates a high quality of product which originates from Scotland but, unlike with PDO designation, there is no requirement for particular methods of preparation.
3. Traditional Specialities Guaranteed (TSG) is the least used category. It highlights traditional aspects such as the way a product is made or its composition, without being linked to a specific geographical area. There are currently no Scottish products registered under the TSG scheme but one UK example is Traditional farmfresh turkey which denotes a particular method and superior standard of quality.

Protecting your product

GI protection under any of these designations guarantees a product’s characteristics or reputation, authenticity and origin. It protects the product name from ‘misuse, imitation or evocation’, such as:

• commercial use of a registered name on a product that does not meet the specification
• giving the impression the product is genuine
• giving false or misleading information on the origin, nature or essential qualities of the product – if labelling uses ‘style’, ‘flavour’, ‘as produced in’ or similar descriptions
• any other practice that misleads the consumer about the origin of the product

The producer of a registered product has standing to challenge the sale or marketing of products which infringe these rules. The first step is a cease and desist letter but if this is not effective, Harper Macleod LLP’s Intellectual Property team can seek court orders to prevent the registered name or associated terms being misused.

Some practical advice for product protection includes:

• get registered. If your product meets the criteria for one of the UK GI schemes then you should register in the UK and EU, ensuring that you fulfil the product specification and proceed to use the labelling and logos appropriately;
• monitor the use of your registered product name. Use Google alerts or other such systems to ensure that you are aware of competitors who may be misusing the registered terms;
• take swift action. An initial legal letter may be sufficient to halt the use of registered terms by unregistered users, failing which, we can pursue further action in the domestic courts or connect you with one of our international partners if the infringement has taken place abroad.

Get in touch

If you have any queries about the new UK GI schemes, product protection or legal remedies for infringement then please contact a member of Harper Macleod LLP’s Intellectual Property team.

• Glasgow: 0141 221 8888
• Edinburgh: 0131 247 2500
• Inverness & Highlands: 01463 798 777
• Elgin: 01343 542 623
• Shetland: 01595 695 583