The Taiwan Intellectual Property Office (TIPO) has announced the registration of certification marks for “SCOTCH WHISKY” in English and Chinese characters (蘇格蘭威士忌) by the Scotch Whisky Association (SWA). The SWA have heralded the registrations as “a legal breakthrough” that will give consumers even greater confidence in the quality of what they are buying as well as a further boost to Scotch Whisky producers exporting to Taiwan.

According to the SWA, Taiwan is the fourth biggest market for Scotch by value with exports worth £75 million in the first six months of the year. It is also the third biggest overseas market for Single Malt with exports worth £41m in the first half 2016.

These geographic certification mark registrations in Taiwan will make it more straightforward to take legal action against anyone trying to produce or sell fake Scotch in the future. Winkler Partners’ Christine Chen, who represented the SWA in their application for the marks, agrees: “These marks will help us, together with the SWA, pursue producers and sellers of fake whisky in a more effective fashion, and offer the Taiwanese public greater protection from potentially harmful counterfeits. We are grateful to our colleagues at the TIPO for their professionalism in approving the applications of these marks”.

Following its accession to the WTO in 2002, Taiwan amended its Trademark Act to protect geographical indications (GI) against misuse in line with TRIPs by allowing the registration of geographic certification and collective marks. To date, Taiwan has granted 51 geographic certification marks and 45 geographic collective marks. Of those, 62 protect domestic products such as Alishan High Mountain Tea and Chi-Shang Rice, while a further 34 protect foreign products including Darjeeling tea from India, Awamori (a distilled rice liquor) from Okinawa, and Prosciutto (Parma ham) from Italy.

“Scotch Whisky” has been registered as a GI or certification/collective mark in a number of jurisdictions around the world including the EU, Canada, China, Australia, India, Malaysia, Panama, Thailand, Turkey, Vietnam, Macao, Peru, and the Dominican Republic.

For more information on certification marks or other intellectual property matters in Taiwan, please contact Peter Dernbach at pdernbach@winklerpartners.com and Christine Chen at cchen@winklerpartners.com.