Scotch whisky recognized as geographical indication
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The Chinese Trademark Office has recognized scotch whisky as a geographical indication (GI) by registering it as a collective trademark in China.
In general, the laws on GIs aim to protect the goodwill built up by, and enhance the reputation of, the distinctive products from a particular region.
Following the registration of scotch whisky as a GI, only whisky that is manufactured in Scotland may now be sold in China under that name. Accordingly, the registration effectively entitles the Scotch Whisky Association to enforce its rights over the SCOTCH WHISKY trademark in respect of products that are sold as scotch whisky but are not manufactured in Scotland. This represents a significant boost for Scotland’s whisky industry, as China has been one of the biggest emerging markets for whisky in recent years. According to the association’s figures, 17 million bottles of scotch whisky were shipped to China in 2007 alone.
As with many other products in China, there have been several cases involving counterfeit whisky products. In 2006 the association assisted the Chinese authorities in the investigation of 50 suspect brands, which resulted in the seizure and destruction of counterfeit whisky products. However, the recognition of scotch whisky as a GI will now allow Scottish distillers to take any alleged counterfeiters of their product to court or to pursue other forms of legal action. Further, the protection of the collective trademark SCOTCH WHISKY covers both the description 'scotch whisky' and its Chinese translation.
However, while the collective trademark offers protection for the category of scotch whisky as a whole, a GI is not generally owned by one particular trademark owner and, as such, does not function in the same way as a trademark in that it cannot be used to distinguish the goods and/or services of one particular trader. Accordingly, individual distillers will still need to register their own trademarks in China in order to obtain protection for their brands.
The recognition of scotch whisky as a GI is also significant in that it illustrates a wider momentum to protect indigenous products. On the international level, a multilateral register of GIs for wines and spirits is yet to be formed. This could be attributed to the divergent views of the various interested member countries at the Sixth World Trade Organization Ministerial Conference, which was held in Hong Kong in December 2005. However, many producers are fast waking up to the importance of acquiring domestic GI registrations in different jurisdictions. Following the recent victory of scotch whisky, it is expected that there will be a new wave of GI registrations in other emerging markets, such as India.
Ai-Leen Lim, Bird & Bird, Hong Kong
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