Case Details
- Citation: [2019] SGIPOS 4
- Court: Intellectual Property Office of Singapore
- Date: 2019-03-06
- Judges: Tan Mei Lin
- Plaintiff/Applicant: Isetan Mitsukoshi Ltd.
- Defendant/Opponent: The Scotch Whisky Association
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Geographical Indications Act, Trade Marks Act
- Cases Cited: [2019] SGIPOS 4
- Judgment Length: 10 pages, 3,608 words
Summary
This case involves a trade mark opposition filed by the Scotch Whisky Association against Isetan Mitsukoshi Ltd.'s application to register the trade mark "ISETAN TARTAN" in Singapore. The key issues were whether "Tartan" constitutes a geographical indication protected under the Geographical Indications Act, and whether Isetan's use of the mark would be prohibited under the Trade Marks Act. The Intellectual Property Office of Singapore ultimately ruled in favor of Isetan, finding that "Tartan" is not a protected geographical indication.
What Were the Facts of This Case?
Isetan Mitsukoshi Ltd., a leading Japanese retail group, applied to register the trade mark "ISETAN TARTAN" in Singapore in 2016. The Scotch Whisky Association, an association representing Scotch whisky producers, opposed the registration. The opposition was filed on the grounds that "Tartan" is a geographical indication protected under the Geographical Indications Act, and Isetan's use of the mark would be prohibited under the Trade Marks Act.
Isetan already had registrations for the "ISETAN TARTAN" mark in Japan and France, and had pending applications in Malaysia and Thailand. However, its application in China had been refused on the basis that the mark was likely to mislead consumers into thinking the products originated from Scotland.
The Scotch Whisky Association submitted extensive evidence to show the long-standing association between tartans and Scotland, as well as evidence that Singaporean consumers would likely associate tartans with Scotland. They also provided examples of Scotch whisky producers using tartan patterns and the word "Tartan" on their labels and branding.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether "Tartan" constitutes a geographical indication under the Geographical Indications Act, such that its use by Isetan would be prohibited under the Trade Marks Act.
2. If "Tartan" is a geographical indication, whether Isetan's use of the "ISETAN TARTAN" mark would mislead the public as to the geographical origin of the goods, in violation of the Geographical Indications Act.
How Did the Court Analyse the Issues?
On the first issue, the Hearing Officer examined the definition of "geographical indication" under the Geographical Indications Act. This requires that the indication identify goods as originating from a particular place, and that a given quality, reputation or characteristic of the goods is essentially attributable to that place of origin.
The Hearing Officer found that while tartans are strongly associated with Scotland, there was no evidence that the word "Tartan" itself is used to identify goods or that "Tartan" whiskies possess any particular qualities attributable to Scotland. The use of tartan patterns and the word "Tartan" on whisky labels was found to be for the purpose of identifying the distillery, not the geographical origin of the product.
Therefore, the Hearing Officer concluded that "Tartan" does not meet the legal definition of a geographical indication under the Act. The opposition on this ground was rejected.
On the second issue, the Hearing Officer noted that even if "Tartan" was a geographical indication, the Geographical Indications Act only prohibits the use of a geographical indication in a manner that misleads the public as to the true geographical origin of the goods. Since the "ISETAN TARTAN" mark clearly identifies Isetan as the source of the goods, rather than suggesting a Scottish origin, the Hearing Officer found no violation of the Act.
What Was the Outcome?
The Hearing Officer dismissed the Scotch Whisky Association's opposition in its entirety. Isetan Mitsukoshi Ltd. was allowed to proceed with the registration of the "ISETAN TARTAN" trade mark in Singapore.
Why Does This Case Matter?
This case is significant for a few reasons:
Firstly, it provides important guidance on the legal definition of a "geographical indication" under Singapore's Geographical Indications Act. The ruling clarifies that for a sign to qualify as a geographical indication, it must be used to identify the geographical origin of the goods themselves, not just be associated with a particular region. The mere use of a regionally-associated term like "Tartan" is not sufficient.
Secondly, the case establishes that the use of a term associated with a particular region will not automatically be prohibited, even if that term is a geographical indication. The key question is whether the use of the term in the trade mark would mislead consumers about the true geographical origin of the goods.
Finally, this case is noteworthy as the first time the Geographical Indications Act has been considered by the Intellectual Property Office of Singapore since the Act came into force in 1999. The Hearing Officer's analysis of the Act's requirements provides helpful precedent for future cases involving geographical indications.
Overall, this judgment clarifies the scope of protection afforded to geographical indications in Singapore, and sets an important benchmark for assessing whether a trade mark's use of a regionally-associated term constitutes a violation of the law.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2019] SGIPOS 4 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.