Scotch whisky fans will be happy to hear that the Taiwan Intellectual Property Office (TIPO) has confirmed the registration of certification marks for “Scotch Whisky” in English and Chinese by the Scotch Whisky Association (SWA). Counterfeits of luxury products such as Scotch whisky have been popping up over the years. In Taiwan, the string of food safety incidents relating to cooking oil and other food and beverage products have raised public health concerns. The registration of certification marks will help to improve consumer confidence in product quality and can boost the number of producers exporting to Taiwan.
Taiwan’s Trademark Act was amended in 2002 after it joined the WTO, to include protection of geographical indications (GI). A GI is a name or sign on products that corresponds to a specific geographical location or origin. The right to use a GI allows the owner to prevent a third party whose product does not confirm to the standards from using it. In Taiwan, certification and collective marks are used to secure similar protection. Certification marks are provided when defined standards are complied with but does not require membership, while collective marks are owned by an association that is responsible for ensuring the compliance with certain standards by its members.
“Those that are WTO members are obligated under the WTO TRIPs agreement to implement certain minimum protection for GIs. However, how and to what extent such protections are provided, varies from country to country,” says Christine Chen, partner at Winkler Partners, who advised the SWA. “Some countries, employ a GI registry, for example, India. In others, protection of GIs is effectively available under the national trade mark regime through geographic certification and collective marks. This is the case in Taiwan.”
Since the amendment of the Trademark Act, 51 geographic certification marks and 45 geographic collective marks have been granted in Taiwan. Some examples include Darjeeling tea from India, Taiwan’s own Alishan high mountain tea and prosciutto ham from Italy. “Scotch Whisky” is also registered as a certification or collective mark in other Asian jurisdictions such as China, Australia, India, Malaysia, Macao and Thailand.
“We do see opportunities for brand owners whose products are popular in Taiwan to better protect those brands. For example, over the last few years, wines from South America and Australia have gained in popularity, so any related GIs have a good chance of being registered in Taiwan," says Chen.
The certification marks obtained by the SWA ensure that Scotch whisky is made in Scotland from water, cereals, and yeast and matured for at least three years. “The threshold for successfully registering a geographical certification mark in Taiwan is high. The proposed mark should be protected in the country of origin,” says Chen. “The applicant must prove that it is qualified and capable to certify and monitor use of the mark. Comprehensive regulations of use of the mark must be filed with the application setting out the characteristics to be certified by the certification mark; the condition on the use of the certification mark; the method of managing and supervising the use of the certification mark; and the procedures for applying to use the certification mark and resolving disputes.” What protections are afforded in other jurisdictions can help to strengthen the application for certification.
"The process was made quite simple because SWA already had a good claim to the Scotch Whisky mark, including the UK Customs' Spirit Drinks Verification Scheme, which was introduced in 2014, and its registration in several other major markets. The TIPO will take all these factors into account when making a decision to award trade mark rights. The onus is on the brand owner to demonstrate that they are the rightful owner of the mark and that they have the tools to effectively police it," says Chen.
“A geographical certification mark can be revoked, for example, if the owner uses it as a trade mark, is no longer competent to certify another person’s goods or services to which the registration certification mark is designated, discriminates against those who apply for certification, or does not manage or supervise the use pursuant to the regulations of use,” adds Chen.Geographical indications are being recognised more and more by consumers and serve as a product differentiator in the market. Brand owners should consider registering their product marks to ensure protection of their brands and the ability to pursue legal action against any one selling or producing counterfeits of their products.