Scotch Whisky Association fails to prevent registration of 'Mac' mark for whisky

Argentina

In Fratelli Branca Destilerías SA v The Scotch Whisky Association, the Civil and Commercial Federal Court of Appeals has rejected as groundless an opposition filed by the Scotch Whisky Association against an application for the registration of the trademark MACLIN, filed by Fratelli Branca Destilerías SA, for products in Class 33 of the Nice Classification (Court File No 332/2007, October 10 2013).

The opposition was based on the argument that the element ‘Mac’ of the MACLIN mark was suggestive of products originating from Scotland and, therefore, its registration for whisky and whisky liquors originating from a country other than Scotland should be prevented, due to Scotland’s high reputation in this field. It should be noted that Fratelli Branca had registered the MACLIN mark in the past, but was not allowed to renew it due to lack of use for a period of five years upon expiration, even though the mark had been used before that five-year period.

The court's decision focused on three elements.

First, regarding an affidavit signed by Ian Barclay (the legal director of the Scotch Whisky Association), the court found that it was a statement made by a witness whose deposition should have been offered as part of the lawsuit, instead of being submitted by way of a document. The relative value of this document was emphasised by the fact that the affiant was an interested party, who had given his testimony without any control or any involvement by the other party.  

Second, the court noted that the Scotch Whisky Association had argued in its opposition that Fratelli Branca had previously used the MACLIN mark to identify whisky made from Scottish malts, ​​but produced in Argentina, the packaging of which bore the picture of a piper. On the other hand, the Scotch Whisky Association sought to minimise the importance of Fratelli Branca’s previous registration for the mark, and argued that the MACLIN mark should be considered as a new mark. Therefore, according to the association, it should be assessed as such, regardless of previous registrations. The court considered that the argument that Fratelli Branca’s previous use of the mark should be taken in consideration was at odds with the position that the mark should be assessed regardless of its history.

Finally, the court held that, as Fratelli Branca was a producer of alcoholic beverages, it was conceivable that the MACLIN mark would be used in the future to identify whisky not produced in Scotland. Therefore, the court analysed the Scotch Whisky Association’s core argument that the ‘Mac’ prefix referred to a Scottish origin and that it was necessary to prevent the registration of any mark containing that prefix for whisky not produced in Scotland. The court considered that this argument was not admissible or reasonable, since it could be upheld only by making a great effort of imagination or by taking into account the view of a small audience. This severely weakened the reasonableness of the opposition.  

The court added that, while it was true that whisky was an important part of Scotland’s heritage, this was insufficient to conclude that consumers of whisky would believe that products sold under the prefix ‘Mac’ had a Scottish origin. The court concluded by saying that consumers of alcoholic beverages are not children, but qualified consumers who will be especially careful when purchasing the goods; in addition, the label clearly stated that Fratelli Branca’s product is "Made in Argentina", as is mandatory under the local law.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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