SINGAPORE —  A group representing the Scotch whisky makers has failed to block Japanese department store Isetan from using the word “tartan” to market its whiskeys here.

Isetan Mitsukoshi, which owns Isetan (Singapore), applied to register the trademark “Isetan Tartan” in March 2016.

In January 2017, the Scotch Whisky Association filed its opposition to it.

The association represents the leading distillers, blenders and exporters of Scotch whisky and one of its principal objectives is the protection of the Scotch whisky trade around the world.

THE ARGUMENT

The group argued that the tartan — the chequered design associated with Scottish clans and printed on kilts — is an iconic symbol of Scotland and can function as a “geographical indication” (GI).

A GI, typically the name of a place, indicates that a certain product originated in that location, and has qualities or a reputation that are due to that origin.

For example, the French Comite Champagne, which represents growers in the French region of Champagne, works to ensure that only wines that are from Champagne and meet the quality associated with the word can be called “champagne”.

In its grounds of decision, the Intellectual Property Office of Singapore (Ipos) noted that other indicating terms may also suffice as GIs, as long as they identify the goods as originating in the territory, region or locality in the territory.

For example, it may be argued that iconic symbols such as the Eiffel Tower, the Great Wall of China or the Taj Mahal may serve as GIs of products from France, China or India, Ipos said.

Under the law, trademarks cannot be registered if they contain a GI.

The Scotch Whisky Association submitted “extensive amounts” of evidence showing “the long association between the tartan and Scotland”, Ipos noted, as well as evidence which, it claimed, showed that Singapore consumers are likely to associate tartans with Scotland.

Furthermore, the association argued, Scotch whisky producers frequently incorporate the tartan pattern on their labels or the word “tartan” in their brand names.

THE RULING

But ultimately, IPOS, said, the association’s arguments were “misconceived” and ruled that the word “tartan” is not a GI.

“The relevant issue is not whether the tartan is or is not iconic of Scotland, whether consumers associate tartans with Scotland or even whether it can or cannot function as a geographical indication, but whether the tartan (or more precisely, the word ‘tartan’) is a geographical indication.”

GIs identify goods with a given quality, reputation or other characteristic attributable to their origin, Ipos said.

But there was no evidence to show that the word “tartan” is used to identify goods, nor was there evidence to show what characteristics “tartan” whiskies supposedly possess, it added.

Furthermore, Ipos said, the trademark being applied for is for the plain words “Isetan Tartan” with no emphasis, stylisation or device.

This would not deliberately cause, in a direct, immediate and obvious manner, an expectation that the goods originate from Scotland, Ipos added.

“It does not contain the word ‘Scotland’ and neither does it contain any symbols or designs representative of Scotland. ‘Isetan’ is the name of the applicant and is its housemark. For those who have heard of the applicant, it would probably evoke Japan more than Scotland.”

The word "tartan" is a design or pattern, Ipos added.

It also said that while each Scottish clan may have its own distinctive tartan pattern, tartan patterns are not used exclusively by the Scots and the word "tartan" is in no way "synonymous with Scotland”.