THE TOMATIN DISTILLERY COMPANY LTD AGAINST THE TOMATIN TRADING COMPANY [2021] ScotCS CSOH_100 (06 October 2021)

THE TOMATIN DISTILLERY COMPANY LTD AGAINST THE TOMATIN TRADING COMPANY [2021] ScotCS CSOH_100 (06 October 2021)

The court found that the pursuer's marks, particularly the 2018 Marks, had acquired distinctiveness through longstanding use and investment, were not merely descriptive of geographical origin, and registration was not in bad faith. The defender's proposed use of 'Tomatin Trading Company' in relation to overlapping classes would likely cause confusion and take unfair advantage of the pursuer's goodwill and reputation. The statutory defences did not apply as the use was not in accordance with honest practices. The pursuer succeeded on infringement and passing off. The defender's counterclaim for invalidity failed.

Citation
[2021] ScotCS CSOH_100
Parties
Pursuer: The Tomatin Distillery Company Limited; Defender: The Tomatin Trading Company
Jurisdiction
Scotland
Judgment Date
06 October 2021
Procedural Posture
Intellectual Property Action / Final Judgment After Proof
Outcome
Pursuer's claims upheld; defender's counterclaim dismissed
Legal Topics
Trademark Infringement, Passing Off, Trade Mark Validity, Bad Faith Registration, Geographical Indication, Public Policy
Intellectual Property Trademark Law Trademark Infringement Passing Off Trade Mark Validity Bad Faith Registration Geographical Indication Public Policy

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Parties

The Tomatin Distillery Company Limited

Pursuer

The Tomatin Trading Company

Defender

Procedural Posture

Intellectual Property Action / Final Judgment After Proof

Legal Issues

  1. 1 Whether defender's proposed use of 'Tomatin Trading Company' infringes pursuer's registered trade marks under sections 10(2) and 10(3) of the Trade Marks Act 1994
  2. 2 Whether pursuer's 2018 Marks are invalid under sections 3(1)(c), 3(3)(a), and 3(6) of the Act
  3. 3 Whether defender's use constitutes passing off at common law

Ratio Decidendi

The court found that the pursuer's marks, particularly the 2018 Marks, had acquired distinctiveness through longstanding use and investment, were not merely descriptive of geographical origin, and registration was not in bad faith. The defender's proposed use of 'Tomatin Trading Company' in relation to overlapping classes would likely cause confusion and take unfair advantage of the pursuer's goodwill and reputation. The statutory defences did not apply as the use was not in accordance with honest practices. The pursuer succeeded on infringement and passing off. The defender's counterclaim for invalidity failed.

Court Disposition

Pursuer's claims upheld; defender's counterclaim dismissed

Orders

  • Declaration that defender's proposed use infringes pursuer's registered trade marks under sections 10(2) and 10(3) of the Trade Marks Act 1994
  • Declaration that defender's use constitutes passing off