Manx whiskey on the rocks

In the national media, the recent battle waged by drink industry giants to stop a tiny Isle of Man distillery calling its product, a redistilled whisky, 'whiskey', was seen as the big battalions using a sledgehammer to crack a nut.

In the drinks industry, however, the case in which Mr Justice Rattee ruled that the Isle of Man's Glen Kella distillery was in breach of UK passing off law and European Regulations is of some significance.

At a time when many in the industry are striving to come up with new products, the case serves as a timely warning of the care companies must take not to give extravagant descriptive name tags to their latest products.

The case is one which intellectual property specialist Tony Willoughby, who acted for The Scotch Whisky Association, Guinness-owned United Distillers, and Allied Domecq Spirits and Wines, says was fairly straightforward in legal terms.

Nevertheless, it does emphasise the increasing importance of IP law to the food and drink industry as more and more food and drink companies turn to the courts to protect their product reputations and trade names.

The choice of Willoughby, a senior partner with the London-based IP specialist practice of Willoughby & Partners, to take on the case for the industry majors was no surprise.

He is a veteran campaigner of food and drink IP disputes and cut his legal teeth in the drinks industry, working in-house when he first qualified with the Distillers Company.

The argument in the recent case involved a two-pronged attack on Glen Kella's activities. It was argued that in marketing its "white whiskey" as whiskey it was guilty of passing off. Also it was argued that sale of Glen Kella's product as a genuine whiskey breached EEC regulation number 1576/89.

Willoughby says that, to him, one of the astonishing things about the case was that it got as far as it did.

"The law in this area is so well-established that, in my opinion, the matter should never have needed to go to full trial," he says. "It should be made clear that our clients in no way wanted to stop Glen Kella selling its product. They merely wanted to stop Glen Kella calling it whiskey.

"The case law in this area is already considerable. Champagne, advocaat, sherry and whisky have all been at the centre of past cases," he adds.

From the point of view of case law, this case is not seen as adding a great deal to the existing weight of law already backing drinks producers who turn to the courts to protect their products. However, the case is a warning to the drinks industry at a time of increasing emphasis on the development of new products.

"There are increasing numbers of new products coming on to the market and this case acts as a reminder to the trade of the need to take care when deciding how to describe them," Willoughby says.

It is a case which also emphasises the continuing importance of the food and drink industry in IP law, and marked a second major High Court win in seven days for Willoughby.

He also represented United Biscuits in its battle to prevent Asda calling chocolate biscuits similar to Penguins by the name 'Puffins'.