The Scotch Whisky Association v The Mill Liquor Save Limited
Wellington High Court
22 and 30 November 2012
This appeal (“a case of whisky, or something vaguely like it,” in the words of Kos J) serves as a warning against seeking to adduce evidence in reply which is in reality evidence in chief in disguise. It also illustrates the difficulties that can arise from a loosely drafted specification, and provides guidance on the proper interpretation of a specification.
The Mill Liquor Save Limited (“The Mill”), an online liquor retailer, applied to register the word mark MACGOWANS in class 33 for “whisky flavoured spirits; none of the foregoing being whisky”. It had used the MACGOWANS mark on a 13.9% alcohol by volume concoction of water, distilled spirit, sugar, colour, flavour and preservative together with labelling including “the flavour of the Highlands” and “bottled in Australia”. The product was not “whisky,” and was variously described by the Mill as a “whisky-flavoured spirit” or a “light spirit”. It was sold on The Mill website at a substantially lower price than the cheapest bottle of Scotch Whisky. It fell outside the definition of “whisky” in the applicable Food Standard.
The Scotch Whisky Association (“Association”) was an international body representing the majority of producers of Scotch Whisky globally. It routinely objected to the registration of trade marks it perceived as adversely affecting the interests of the Scotch Whisky trade. It opposed The Mill’s application for MACGOWANS. When unsuccessful before the Assistant Commissioner of Trade Marks, the Association appealed to the High Court.
At an early stage in the opposition, The Mill sought to amend its specification to “alcoholic beverages.” That application was declined.
The Association contended that:
(a) Use of MACGOWANS was likely to cause consumers to be confused or deceived into thinking that the relevant goods were “Scotch Whisky” (when in fact they were not), or to be otherwise confused as to the origin or nature of the goods, such that registration would be contrary to s17(1)(a) of the Trade Marks Act 2002 (“Act”);
(b) Contrary to s32 of the Act, the applicant had no intent to use MACGOWANS in respect of “whisky-flavoured spirits”, since the product was not “spirits” according to the word’s proper meaning.
The Association’s evidence showed that substantial sales had been made of a number of “Scotch Whisky” brands with the letters “Mc” or “Mac” in their name, that “MacGowan” is a Scots Gaelic name, and that the prefix’s “Mac” or “Mc” are associated with Scottish names. The association submitted that, bearing in mind Scotland’s reputation for the production of Scotch Whisky, consumers would expect any whisky or whisky flavoured spirit sold under the mark MACGOWANS to be from Scotland and be misled if this was not the case.
After the applicant’s evidence, the Association filed statutory declarations ostensibly in reply in which witnesses who had been shown a photograph of the MACGOWANS product deposed that they thought it looked like “whisky”, “Scotch Whisky” or “Malt Whisky”. The applicant did not object to this evidence.
The Mill disagreed that the name MACGOWANS was highly evocative of Scotland, and noted that it was not an uncommon New Zealand name. It also noted that the Association had adduced no evidence of confusion or deception.
The Assistant Commissioner (in dismissing the opposition) relevantly held that:
(a) The declarations produced in reply by the Association were not evidence strictly in reply in accordance with Regulation 85 of the Trade Marks Regulations 2003 (“Regulations”) and were therefore not admissible. Rather they were in the nature of evidence in chief because they were adducing fresh facts concerning alleged confusion as to the nature of the MACGOWANS product;
(b) Even uninvolved consumers would read the information on the spirits container and any relevant point of sale information to gain basic appreciation of the true nature of the product. Consumers would expect to see the words “Scotch Whisky” on the label of a product that was in fact Scotch Whisky (those words were not on the MACGOWANS product). The opposed mark and the “Scotch Whisky” trade description were dissimilar. The name “MacGowan” was not determinative of national identity.
(c) The MacGowans product was a “spirit” as a matter of ordinary meaning, even if it was not for the purposes of the relevant Food Standard.
The three issues on appeal were:
- Was the Associations’ reply evidence admissible?
- Would the MACGOWAN mark be likely to deceive or cause confusion?
- Had The Mill intended to use the mark applied for in respect of “spirits” (being the key part of the specification of goods applied for)?
Held, allowing the Association’s appeal and refusing registration:
Was the Association’s reply evidence admissible?
(1) The reply evidence should have been excluded. It did not satisfy the real test under Regulation 85, which was whether:
(a) The “reply evidence” could have been filed in support of the notice of opposition (pursuant to Regulation 82); and
(b) The dominant purpose for it being adduced in reply was to support the original notice of opposition, as opposed to responding directly to something said in evidence from the applicant. , .
Betterware International Limited v Commissioner of Trade Marks HC Wellington, CP 19/02, 6 May 2002 distinguished.
(2) It would be unreasonable to allow the evidence to be adduced on a “last word” basis without The Mill having the opportunity to answer it .
(3) The absence of an objection by The Mill to the filing of reply evidence did not require the Assistant Commissioner to have regard to it. 
(4) Even if admitted, serious difficulties lay in the way of drawing cogent conclusions from the evidence. The extent to which either context or labelling getup contributed to the deponent’s perceptions was not clear  and 
Would the MACGOWNS trade mark be likely to deceive or cause confusion?
(5) In a case under s17(1)(a), where the question is not one of inter-mark rivalry, but rather concerns alleged inherent deception or confusion, it may not be necessary for the opponent to establish an awareness, in the relevant market, of the opponent’s goods. ,  to 
K-Swiss Inc v Federation of the Swiss Watch Industry FH (2009) 83 IPR 635 distinguished.
(6) There was no evidential foundation for the conclusion that purchasers of the MACGOWANS’ product would generally read the label and point of sale material carefully, nor that they would expect the words “Scotch Whisky” to be on the label of a product that was in fact Scotch Whisky.  and 
(7) In making an assessment under s17(1)(a), it was essential that the Court did not give undue weight to its own appreciation of the market, the Court’s own knowledge simply being part of an available spectrum of views. Each view (in that spectrum) taken into account must be objectively reasonably held, albeit upon differing degrees of inspection or acquaintance with the market generally and the product particularly.  and 
(8) The Court was required to consider the use of the name MACGOWANS on a whisky-flavoured spirit, in any reasonably likely form of packaging, but without regard to the present labelling referring to “the flavour of the Highlands”, or the words “bottled in Australia”. The product’s getup and packaging other than the mark itself and the ingredients labelling which by law must be present, were to be disregarded. All purchasers would see the MACGOWANS name but only some would look at the ingredients label. , , 
(9) The absence of evidence of any consumers being misled was not a point in The Mill’s favour. It was for The Mill, as the applicant for the statutory monopoly, to establish the absence of confusion, not for the opponent to do the opposite. 
(10) In the circumstances and by a narrow margin it was not likely that a substantial number of notional purchasers would be confused that a tan coloured alcohol bearing the name MACGOWANS, sold potentially in the vicinity of, but at a significant price remove from Scotch Whiskies would be either “Scotch Whisky”, contain “Scotch Whisky”, or come from Scotland. 
(11) The possibility of a mere initial doubt on the point was not enough to constitute confusion under s17(1)(a), even applying the “caused to wonder test,” if the whole of the surrounding circumstances would dispel that impression in all but an insignificant number of relevant potential purchasers. 
Had The Mill intended to use the mark in respect of “spirits”?
(12) The outcome of the appeal turned on the final issue. The Court was not satisfied that The Mill had established intended use of the mark MACGOWANS in relation to “spirits” of any kind (as required under s32). Registration was refused on the basis that The Mill had not discharged its onus of establishing an intention to use the mark in respect of “spirits” at the time of the application. In particular:
(a) “Spirits” had to be given the meaning appropriate to its context – namely the meaning adopted by persons who would in fact read the specification. That was not the ordinary consuming public. Rather the relevant meaning was that adopted by persons such as trade mark examiners and trade mark attorneys, to whom the specification is directed to. Those persons were likely to read the word “spirits” as containing a more specific, technical meaning. 
(b) Even if a broader, ordinary meaning were given, in order to constitute “spirits” for the purposes of the specification, the intended uses would need to capable of being labelled “spirits”. That was not the case.
(c) It was not possible to move past the dictionary definitions of “spirits” as “strong liquor, distilled”. Rather the MACGOWANS product was a mixture of spirits with water, flavouring and other substances. Its alcohol level could not be described as strong.
(13) The Court’s view in this regard was confirmed by the fact that, after opposition was entered, The Mill sought (unsuccessfully) to change its specification to “alcoholic beverages”. That amendment would have disposed of the issue altogether but the application for amendment had already been rejected.