Peter Scot defeats Scotch Whisky Association in India’s Supreme Court
Over the past couple of decades the Scotch Whisky Association has been hugely successful at defending the “geographical indication” of Scotch whisky. Its efforts have ensured the product has enhanced its position and profitability in global markets when other types of drink — including brandy, vodka and gin — have lost some of their cachet.
The SWA always comes down like a ton of brinks on imposters — non-Scotch whiskies which try to make out they’re Scottish through the use of words such as ‘Scottish’, ‘Scotch’, ‘Scots’, ‘Scot’, ‘highland’, ‘chieftan’, ‘clan’ and presumably also ‘bagpiper’ onto their bottles.
The GI system also prevents makers of cheap sparkling wines from labelling these as Champagne, and makers of cheap breaded hand passing this off as Parma ham.
The Atholl Crescent-based industry group, led by CEO Gavin Hewitt, must therefore be furious that India’s Supreme Court has ruled in favour of Bangalore-based conglomerate Khoday India Ltd in a trademark dispute. After an astonishing 21 years of litigation and counter litigation, the New Delhi based court ruled on 29 May that Khoday should be permitted to continue calling one of its best-selling whiskies Peter Scot.
Despite reports to the contrary, the SWA still has until the end of June to mount a counter appeal, and in any case an Indian professor of jurisprudence is arguing that the case could turn out to be a pyrrhic victory for India.
According to an article published on livemint.com — a web-based news partnership between the Wall Street Journal and the Hindustan Times — Khoday’s courtroom victory may lead to global retaliation which will effect Indian products including basmati rice and Assam tea
Speaking about the relevance of trademark and GI rulings and not specifically on the Peter Scot case, Rahul Singh, professor at the National Law School of India, said that in such instances judges must not interpret facts in a manner that would result in display of “nationalistic protection or economic jingoism”.
“Tomorrow our Assam tea and Basmati rice could get into trouble in another country” if this happens, he cautions.
Peter Scot, which has a red lion rampant prominently displayed on its labels, was launched in 1968 and Khoday registered the name as a trademark in 1974. In its defence, it argued that the SWA’s case was baseless, since it only made its complaint against the brand 13 years after the brand was first registered.
In 1987, the SWA complained to India’s Trademark Registrar that the word “Scot” in Peter Scot was deceptively similar to the word “Scotch” and would mislead consumers into thinking the Indian distilled product was of Scottish origin. The Trademark Registrar ruled in SWA’s favour. Khoday then appealed to the Madras high court, which also ruled against it. A high court order delivered in October was challenged by Khoday in the Supreme Court.
However, the two-judge bench on 29 May allowed the appeal and validated the use of the ‘Peter Scot’ trademark, partly as a result of the time lag between the brand being registered as a trademark, and the SWA making its initial legal challenge. The bench also based its verdict on the view that connoisseurs of whisky would immediately recognise Peter Scot as a ‘fake’.
“Where the class of buyers is quite educated and rich, the test to be applied is different from the one where the product would be purchased by the villagers, illiterate and poor,” the bench said.
In April, the SWA said it would seek sanctions against India unless the country tore down its oppressive system of import tariffs and opened up its £7 billion per year drinks market. The threat was slammed by Vijay Mallya, the flamboyant billionaire boss of UB Group, which last year acquired Glasgow-based Whyte & Mackay. Mallya accused the SWA of being “paranoid” about India and warned that the association’s “heavy-handed” approach could jeopardise Scotch whisky distillers’ prospects in the country.
The case was Khoday Khoday India Limited vs The Scotch Whisky Association and others (Civil Appeal 4179 of 2008: decided on May 27, 2008) The issue was whether or not the trademark “Peter Scot” ought to be deleted from the Register of Trademarks under section 46 of the Trademarks Act, which provides for rectification of the register.
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