Geography Reference
In-Depth Information
blended with a number of grain whiskies to produce the whisky sold to the
public under brand names. The formula for each brand is secret. There was
evidence that there were no blenders of Scotch outside Scotland and England.
The Court held that producers of Scotch fell within the principle enunciated in
the
Spanish Champagne
case and were entitled to have upheld the description of
their product as 'Scotch whisky'.
6.174
Similar results were obtained by the Scotch whisky manufacturers in passing off
cases in South Africa. In
William Grant v Cape Wine & Distillers
179
the Court
held that a blend of Scotch whisky with local spirit, together with advertising
material showing a Scotsman in full Highland dress and carrying the slogan 'ten
years in Scotland makes all the difference', was actionable. In
Long John
International v Stellenbosch Wine Trust
180
the Court enjoined the sale of a
product called 'Ben Nevis Scotch Whisky Liquor' with a Scottish theme to the
label. The drink actually consisted of whisky distilled with water and sweetened
with sugar.
3. Geographical marks and protectable reputation
6.175
The problem for claimants in relying on passing off to protect their geographi-
cal marks is that where the relevant mark is descriptive of a geographical region
or location as the place of manufacture, a claimant will fail if he can establish no
more than that. In
Chocosuisse Union des Fabricants Suisses de Chocolat v Cad-
bury
181
the Court of Appeal pointed out that something more is necessary. This
requirement was explained by Chadwick LJ:
182
The words 'Swiss chocolate' are, [as Laddie J pointed out at first instance
183
]…
descriptive in nature. They are clearly apt to describe chocolate made in Switzerland.
But they are also apt to describe chocolate made to a Swiss recipe with Swiss expertise
by a Swiss manufacturer. If the words are no more than descriptive - whether of the
place of manufacture or of the identity of the manufacturer - they cannot found an
action in passing-off. The judge identified the point, correctly in my view, in the
following passage of his judgment
184
'It is only if they [the words “Swiss chocolate”] are
taken by a significant part of the public to be used in relation to and indicating a
particular group of products having a discrete reputation as a group that a case of
passing off can get off the ground. I have had to bear this in mind when assessing the
179
(1990) 3 SA 897.
180
[1990] 4 SA 136.
181
[1999] R.P.C. 826
182
Ibid at 832.
183
[1998] RPC 117, at 129.
184
Ibid, lines 31-6.
