Fighting fake Scotch — How solicitors protect Scotland’s national drink around the globe

Peter Ranscombe visits the Scotch Whisky Association to learn how the trade body’s team defends the amber nectar at home and abroad.

Many whisky aficionados have a special cupboard in which they keep their prized possessions. Each bottle tells a story about a person or a place that’s important to the collector.

Alan Park’s cupboard is a wee bit different. Tucked away in the Scotch Whisky Association’s (SWA’s) head office in Edinburgh’s swanky Quartermile development, the trade body’s director of legal affairs keeps bottles of counterfeit Scotch whisky that he and his team have fought to remove from sale.

Shelf after shelf is lined with bottles from around the world, some stretching back to the 1980s and beyond: there’s a bottle of the famous Glen Buchenbach in its wooden box, which was taken off the market because the German courts agreed the word ‘Glen’ evoked Scotch whisky; there’s a row of cans that claimed to contain Scotch but didn’t, leaving a trail of supply-chain breadcrumbs that led from Iraq back through the Netherlands to Austria; there’s even a black plastic Mafia-style gun filled with Scotch, which – although it didn’t break the law – its maker was convinced to remove from the market over questions of taste and decency.

While the SWA’s legal team has an enviable back catalogue of court victories, there’s no resting on its laurels. At the moment, the trade association has upwards of 60 court cases on the go, alongside some 150 investigations – around 100 in China alone – and the monitoring of a further 800 trademark applications globally.

Zero-tolerance approach to counterfeit Scotch

“Each bottle of fake Scotch that’s sold not only represents the loss of a direct sale for a genuine brand but also risks damaging the reputation of the whole category,” Alan explains. “If someone buys a bottle that they think is genuine but it’s fake then they may think, ‘That Scottish whisky is a bit rough – I don’t think I’ll buy a Scottish whisky again, I’ll try bourbon instead’. That reputational damage leads to the loss of future sales for genuine brands.”

The countries in which the SWA’s legal team is most active change from year to year, with China once again becoming busy after several quieter years. Alan leads a team of five lawyers and two paralegals, with three solicitors focusing on Asia-Pacific and the Americas, while the other two lead on Europe, the Middle East, Africa and Russia.

“It’s not just about acting in existing big markets – such as China, the EU or the US – but also taking action in smaller markets that may become important in the future,” Alan adds. “India is a good example – we’ve been taking legal action in India since the 1960s, when only a few tens of thousands of litres were sold there each year.

“Now, it’s a top 10 market, but if we hadn’t stayed on top of it then the country would have been awash with Scottish references and Scottish names for Indian whiskies. We practice zero tolerance to stop those small problems becoming big problems.”

Geographical indications and trademarks

The SWA has many legal tools at its disposal to tackle counterfeit Scotch, which fall into two broad categories: in some jurisdictions – such as the EU – Scotch whisky is a protected geographical indication (GI) and so is covered by intellectual property (IP) legislation, which public authorities can enforce; in other jurisdictions, including Australia and the US, the association relies on Scotch whisky being registered as a category trademark, which it enforces through longer and more expensive court action. Meanwhile, individual brands – which fund the SWA’s work through their companies’ subscriptions – will protect their own individual trademarks.

As well as its in-house lawyers, the trade body works with law firms in individual markets, along with investigators on the ground. “We direct our cases ourselves, down to the level of guiding our agents as to what we want to include in each writ,” points out Alan. “IP experience isn’t a prerequisite for joining our team – instead, we hire litigators who have experience of managing court cases.”

Alan has walked the litigation walk as well as talking the talk. He joined the SWA in 2003 following a career in court practice in Glasgow, before taking over as director of legal affairs in 2016. He cut his teeth undertaking legal aid work in the west of Scotland, choosing that route for his traineeship to gain more court experience at an early stage in his career.

Technology now allows the SWA to monitor trademark applications throughout the globe, not only the attempted use of the names of individual distilleries, but also the names of clans and castles, along with other words such as ‘Highland’ or ‘glen’ that evoke connections to Scotch whisky.

At home, as well as abroad

While 99.9% of the SWA’s legal cases take place overseas, the team does occasionally have to act in the UK. One recent case arose when Dover Port Health Authority inspected a shipment of ‘Sir Edwin’s Whisky Spirit’ from Germany and alerted the SWA, which confirmed its labelling was illegal.

The SWA asked HM Revenue & Customs (HMRC) not to release the shipment, but the taxman refused because its excise duty had been paid. “We were obliged to get an injunction against HMRC before the High Court in London to stop the release of the goods, which was frustrating as we were spending money against a government enforcement agency to protect UK consumers,” says Alan. “As a result, that injunction meant they were obliged to disclose to us the paperwork behind the product.”

That paperwork led to a two-year trawl through a supply chain that sprawled from Germany through Belgium and the Netherlands back to Panama. “We sued everyone in that supply chain – zero tolerance against fake whisky and pretending to have a Scottish connection,” Alan adds. “We operate without fear or favour – if we have to sue the government to get information, then we will, because we need to stop these products getting into the market.”

Tip-offs come in all shapes and sizes, from Scotch whisky distillers spotting fakes through to SWA workers or even members of the public noticing dodgy-looking labels while on holiday. With plenty of work to keep his team busy, it looks like there’ll continue to be more and more bottles added to Alan’s whisky cupboard at the SWA.