Passing Off Scotch!

I was picking up a bottle of scotch for my brother’s birthday earlier this week and I couldn’t escape comparing Scotch to the Institut National case we discussed.

Of course Institut National was a case dealing with champagne and the goodwill in it. In Institut National, the facts describe how French Law provides a definition for the standard of Champagne (i.e., types of grapes, area of growth, method of production, marketing standards, etc). Similarly, UK Law according to the Scotch Whisky Association (“SWA”) defines Scotch as:

“made in Scotland from only cereals, water and yeast; matured for a minimum of 3 years in oak casks; bottled at a minimum strength of 40% ABV; distilled below 94.8% so that it retains the flavour and aroma derived from its raw materials and no flavouring or sweetening is permitted” (see: https://www.scotch-whisky.org.uk/insights/protecting-scotch-whisky/legal-protection-in-the-uk/).

Clearly, there are efforts to establish and maintain the goodwill of scotch as a subcategory of whisky (there are associations created to protect its goodwill and industry such as the Scotch Whisky Association). After a quick search I found an example of passing off in the Scotch context similar to that of Institut National. The Spirit Business describes the Scotch Whisky Association taking legal action against a Virginia Distillery “over its use of the word “Highland”” (see: https://www.thespiritsbusiness.com/2019/07/virginia-distillery-passing-off-whiskey-as-scotch-says-swa/)

(image from: https://www.scotch-whisky.org.uk/)

The Associations argument is “that Virginia’s Distillery’s products are being passed off as Scotch whisky since the term “Highlands” is reserved exclusively for Scotch whisky under US federal regulations” (see: https://www.thespiritsbusiness.com/2019/07/virginia-distillery-passing-off-whiskey-as-scotch-says-swa/).  Do you think the fact that US itself, let alone the UK, has given the definition of scotch regulatory protection adds to the existence of goodwill in Scotch? Nonetheless, the argument made by the SWA is quite similar to the facts in Institut where the contention was on the importance of a region (i.e., the Highlands compared to the Champagne, France). In responding to why the Scotch Whisky Association takes the issue of passing off so seriously, they respond “the SWA works to protect the intellectual property of Scotch whisky…this is vital to protecting Scotland’s national drink and is a deterrent to those who seek to take advantage of the quality and reputation of Scotch whisky” (see: https://www.thespiritsbusiness.com/2019/07/virginia-distillery-passing-off-whiskey-as-scotch-says-swa/).

Regionalism seems to be incredibly important to the goodwill of certain spirits. For fun, I looked into the legal definition of Canadian Whisky, or Canadian Rye Whisky which can be found in the Food and Drug Regulations. I’ve reproduced the section here for reference.

(see: https://laws-lois.justice.gc.ca/eng/regulations/C.R.C.,_c._870/section-B.02.020.html)

Interesting that UK law forbids flavour but Canada allows caramel and flavouring! After taking this class its hard not to see IP everywhere 🙂

Sources:

Institut National des Appellations d’Origine des Vins et Eaux-de-Vie v Andresr Wines Ltd., 1987 CanLII 4051 (ON SC)

https://www.scotch-whisky.org.uk/insights/protecting-scotch-whisky/legal-protection-in-the-uk/

(https://www.thespiritsbusiness.com/2019/07/virginia-distillery-passing-off-whiskey-as-scotch-says-swa/)

https://www.scotch-whisky.org.uk/

Food and Drug Regluations, CRC, c 870, B.02.020 s. 1

https://laws-lois.justice.gc.ca/eng/regulations/C.R.C.,_c._870/section-B.02.020.html