UKIPO rejects whisky maker’s bid to invalidate ‘Loch Ness’ TMs

Duncan Taylor Scotch Whisky has lost in its bid to invalidate six trademarks that use the term ‘Loch Ness’ for alcoholic spirits.

In its decision, published December 13, the UK Intellectual Property Office (IPO) said the Scotch whisky maker could not cancel the trademarks belonging to Loch Ness Spiritsbecause it failed to show convincing evidence that it has an earlier right over the use of ‘Loch Ness’.

The trademarks in dispute use the words “Loch Ness” in connection with gin, vodka, rum, whisky and other spirits and are registered in class 33 and 18.

In its application to invalidate the marks, Duncan Taylor said it was one of its first brands was “Loch Ness whisky”. The product was brought to market by a subsidiary, The Original Loch Ness Whisky Company.

It said that since 2008, the name has been in continuous use and has acquired goodwill. Loch Ness Spirit’s trademarks, said the company, amounted to a misrepresentation that it is affiliated with Duncan Taylor.

“This will result in damage to Duncan Taylor, including diversion of sales and loss of control,” Duncan Taylor said.

In its counter argument, Loch Ness Spirits said Loch Ness is a well-known place in Scotland, and Scotland is associated with spirit production, especially whisky.

Therefore, Loch Ness is liable to be taken as an indication of geographical origin (rather than the trade origin) of spirits, and is therefore not a distinctive mark for such goods,” it said.

In its decision, the IPO rejected Duncan Taylor’s submission that it has been marketing Loch Ness whisky under The Original Loch Ness Whisky Company since 2008.

It said the only evidence identifying Duncan Taylor as the bottler of Loch Ness whisky is an extract from the website of a spirits retailer, masterofmalt.com, but the web page dates from 2019.

The IPO said the only independent documentary evidence showing use of “Loch Ness” in relation to whisky which predates the relevant dates of the case is the copy of the homepage for the website at lochnesswhisky.co.uk

But, it said Loch Ness Spirits had filed sufficient evidence to show that Duncan Taylor had no corporate connection with The Loch Ness Whisky Company.

Additionally, it said Loch Ness Spirits had also submitted evidence to dismantle Duncan Taylor’s assertion that The Original Loch Ness Whisky Company is a wholly-owned subsidiary.

“Loch Ness Spirit’s evidence shows that is not the case. In fact, Duncan Taylor does not appear to have ever owned shares in the company,” the IPO said.