Whisk(e)y in the jar

It’s Burns Night next week so let’s have a look at a IP around everyone’s favourite Scottish export…

23rd January 2021

The world of whisky is full of buzzwords and terminology, from Scotch and single malts, to bourbons and blends. But one point that causes much confusion is the fact that the drink is sometimes spelled ‘whisky’ and at other times ‘whiskey’. So what’s the difference? and why is it important in the world of IP?

‘Whisky/Whiskey’ derives from the Gaelic term usquebaugh which translates as ‘water of life’. Uisge means water. Beatha means life. It’s a term that has been used for many types of invigorating spirits over time (e.g. Eau de Vie).

The spelling difference comes from the translation of words from the Scottish and Irish Gaelic forms. The American spelling is whiskey, most likely due to the large number of Irish immigrants.

So it’s simple:

• Whisky = Scottish
• Whiskey = Irish/American (i.e. not Scotch)

Why is it important?

In December last year, the Scotch Whiskey Association (SWA) filed opposition to a trademark application by Atlanta based ‘ASW Distillery LLC’ for the mark BURNS NIGHT for an American malt whiskey. (Note the presence of the “e”). The Scotch Association claimed that the name BURNS NIGHT was “highly evocative of Scotland when used on a whisky product,” (note the lack of the “e” here). That claim assumes that the buying public in the US understands that BURNS NIGHT refers to the annual celebrations of Rabbie, and that he was Scottish, therefore any whiskey to which he is linked must presumably be Scotch whisky.

Apparently, Americans don’t usually make such connections. They lament ‘the best laid plans of mice and men’; wish they could ‘see themselves as others see them’; declare their ‘love is like a red, red rose’ and annually, on New Years’ Eve, bellow out the question of whether old acquaintances should be forgot during renditions of ‘Auld Lang Syne’; but don’t make the link with Burns and his poetry.

The SWA’s argument raises the interesting question of whether a person’s name can be, or should arguably be allowed to be, a geographic indicator.

ASW quickly moved to dismiss the opposition to its trademark application, and argued that the “obvious” points that the applied-for BURNS NIGHT mark:

• makes no reference to “terra firma,”
• is “not a place name, abbreviation of a place name, nickname for a place name, or symbol of a place name,”
• “does not, and cannot be shown to, have a primary significance as a geographic term,” and
• distills down to a “factual inquiry [that] demands a conclusion that the term ‘Robert Burns’ is not geographically descriptive or primarily geographically deceptively misdescriptive.”

The SWA think they can eke out some legal support for their position, even though ASW’s common sense says, in essence, “Robert Burns ≠ A Place Name.” ASW’s motion avoids confronting expressly or directly several important legal supports for the Association’s arguments. First, 27 CFR § 5.22(k)expressly provides that “the words ‘Scotch’, ‘Scots’, ‘Highland’, or ‘Highlands’ and similar words connoting, indicating, or commonly associated with Scotland shall not be used to designate any products not wholly produced in Scotland,” and never notes that neither “Scots” nor “Scotch” are place names, and never counters the notion that BURNS may be a word “commonly associated with Scotland,” points made in the Scotch Association’s responsive submission, filed January 2, 2020. ASW also fails to address the case of Scotch Whisky Ass’n v. US Distilled Products, where a federal appeals court reversed the dismissal of an opposition, finding that the surname McAdams could in fact be a geographic mis-association with Scotland.

Internationally, courts in Brazil, Israel, and here in the United Kingdom have all found that whiskeys with Mc or Mac names, or tartan-emblazoned labels are geographically misdescriptive. See Ross Petty, supra, at 873–876. This follows on both US and European matters where the use of plaid tartan patterns as trademarks was at issue, such as those in the US involving MCGREGOR clothing and in Belgium and Italy involving BURBERRY raincoats. Whether those cases found confusingly similar tartans to amount to trademark infringement (US and Belgium) or unfair competition (Italy), they also accepted the notion that the public would associate tartan with Scotland and Scottish origin.

So does BURNS NIGHT as the name on any whiskey bottle somehow denote Scotch whisky and so cause confusion when associated with an American whiskey? The US courts are yet to decide.

BURNS alone clearly doesn’t, as Fireball Cinnamon Whisky has trademarked the the tagline TASTES LIKE HEAVEN. BURNS LIKE HELL. (Reg. №3714292)

Will you be celebrating Burn’s night via Teams like us? Let us know and send us some pictures via social media.

Slàinte Mhath!