Brands: Honest practices - the use of a trade mark to indicate geographical origins

United Kingdom
Honest practices...whisky labelling

The concept of "honest practices" is relevant not only to comparative advertising, but also to various defences under the Trade Marks Act, including the use of a mark to indicate geographical origins. The question has arisen in a recent Scottish case concerning whisky from the Laphroaig distillery, Allied Domecq Spirits & Wines Limited v Murray McDavid Limited. LAPHROAIG is a registered trade mark and its owners brought an action against a bottler who had labelled a product as "single malt Scotch whisky from LAPHROAIG DISTILLERY". The product had in fact been made at the plaintiff's distillery, but was never intended to be a single malt and had been supplied on the basis that it was to be added to a blended product. It was therefore different in character from the product marketed under the LAPHROAIG mark by the plaintiff.

An action for trade mark infringement was brought, the defendants arguing that the mark had been used to indicate geographical origin pursuant to the Trade Marks Act, which requires such use to be "in accordance with honest practices". The plaintiff initially succeeded in obtaining an ex parte injunction, the Court finding that there were serious issues to be tried, both in relation to the meaning of "geographical origin" and "honest practices". However, the injunction was subsequently discharged pending trial as the Court did not believe that the plaintiff was seriously threatened by the very small quantities which the defendant had produced, particularly as there was no suggestion of passing off.