Scotch Whisky Association fails in IP challenge

05 February, 2020 by James Atkinson

The Scotch Whisky Association has failed in an attempt to block registration in Australia of the trade mark ‘Clyde River’ for use on alcoholic drinks.

A Queanbeyan, NSW-based applicant in November 2016 sought to register the Clyde River trade mark in the classification reserved for wine, cider, spirits and liqueurs.

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The Clyde River in question is located on the NSW south coast, but the exact nature of the applicant’s intended drinks venture remains unclear.

The SWA opposed registration, arguing the Clyde River mark did not distinguish the goods in question and was likely to mislead or deceive consumers, in breach of Australian Consumer Law.

In a hearing before Australian Trade Marks Office Hearing Officer Kate Doherty, the SWA detailed the use of the place name Clyde River at no less than 14 locations around the world, including the The Clydeside Distillery on the River Clyde in Glasgow.

But Officer Doherty said ‘River Clyde’ and ‘Clyde River’ were not capable of direct substitution in an Australian context.

“In Australia it is not automatic that a place name such Clydebank would be associated with a Clyde River,” she said.

“An example is the suburb Meadowbank in Sydney, which is on the Georges River.”

She said none of the locations proffered by SWA enjoyed the “iconic reputation, geographic size or population density” such that they would cause confusion.

“I am not persuaded on the evidence that a rural estuary on the NSW far south coast is likely to become a centre of production or distribution for the class of goods in the application,” she added.

“Any bottle produced by the applicant could not be named Scotch whisky, could not reference Scotland on the labelling, and must state where the goods are manufactured and/or imported from.”

She rejected the SWA’s submission that Clyde River mark “is clearly evocative of Scotland”.

“Australians are highly accustomed to seeing words that could be thought of as Scottish, for example ‘Perth’,” she said.

“I have insufficient evidence before me that an ordinary Australian would be able to recognise or differentiate Scottish names or places from other foreign or Gaelic languages.

“The large number of other Clyde Rivers around the world further dilute any association with Scotland.

“Accordingly, I find any connotation is not strong enough to cause ‘enough persons in the relevant public to be deceived or confused’,” Officer Doherty said.

Finding the SWA had not established a ground of opposition, she said the Clyde River trade mark will proceed to registration for a period of ten years from the filing date of November 11, 2016.

“As the applicant does not appear to have incurred costs and has not provided assistance by participating in the proceedings, no order for costs will be made,” said Officer Doherty.

The applicant did not respond to a request for comment.