Matthew Gloag and Son Ltd and Another v Welsh Distillers Ltd and Others

JurisdictionEngland & Wales
Judgment Date24 February 1998
Date24 February 1998
CourtChancery Division

Chancery Division

Before Mr Justice Laddie

Matthew Gloag and Son Ltd and Another
Welsh Distillers Ltd and Others

Passing off - marketing Scotch whisky as Welsh - capable of founding civil action

Two nation whisky dispute can go ahead

To market what was in truth Scotch whisky under the trade mark "Swyn y mor" and a label describing it as "Welsh whisky" could be capable of constituting the tort of passing off and founding a civil action by manufacturers of Scotch whisky, as traders whom it was one of the objects of Council Regulation No 1576/89/EEC (OJ 1989 L160 p1) to protect from unfair competition.

Mr Justice Laddie so held in the Chancery Division, in refusing an application by the defendants, Welsh Distillers Ltd, Dafydd Noel Gittins, MDT Wines and Spirits Ltd and MDT International Ltd, to strike out a statement of claim by the plaintiffs, Matthew Gloag and Son Ltd and Chivas Brothers Ltd, as disclosing no reasonable cause of action either for passing off or for alleged breaches of Regulation No 1576/89/EEC.

Article 1(4)(b) of that regulation defines whisky.

Article 5 provides: "(1)…use of the names referred to in article 1(4) shall be restricted to the spirit drinks defined therein…These names must be used to describe said drinks. Spirit drinks which do not meet the specifications laid down for (those) may not bear the names assigned therein to those products. They must be described as 'spirit drinks' or 'spirits'.

"(2) The names listed in paragraph 1 may be supplemented by geographical indications other than those in paragraph 3, provided that they do not mislead customers.

"(3)…(b) These geographical designations shall be reserved for spirit drinks in the case of which the production stage, during which they acquired their character and definitive qualities, took place in the geographical area indicated."

Mr Andrew Waugh and Mr James Flynn for the plaintiffs; Mr Andrew Jordan for the defendants.

MR JUSTICE LADDIE said that the plaintiffs had each been in the Scotch whisky trade for a very long time.

How the defendants marketed their product was exemplified by the label on an exhibited bottle carrying their trade mark "Swyn y mor" in red, positioned over a large red dragon.

Much of the label's lettering was in Welsh but parts in English read: "Welsh whisky…is a spirit unique in taste and origin - a superb blend of malt and grain whiskies blended and bottled by the Welsh Whisky Co, Brecon, Wales, UK. Product of Wales, UK...

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2 cases
  • Boehringer Ingelheim KG v Swingward Ltd; Glaxo Group Ltd and Others v Dowelhurst Ltd and Another
    • United Kingdom
    • Court of Appeal (Civil Division)
    • 5 March 2004
    ...only difference being that the BMS condition 3 statement will be dropped). 56 The case is likened to that of Gloag v Welsh Distillers [1998] FSR 718. In that case the defendant put Scotch whisky in bottles labelled Welsh whisky. His idea was to build up a reputation for his Welsh whisky tha......
  • Antonio Munoz Y Cia SA and Another v Frumar Ltd and Another
    • United Kingdom
    • Chancery Division
    • 26 March 1999
    ...LR 446), Scotch Whisky Association v Glen Kella Distillers Ltd ((1997) Eu LR 455) and Matthew Gloag & Sons Ltd v Welsh Distillers LtdUNK ((1998) FSR 718), each concerned with EEC Regulation 1576/89 (OJ 1989 L160/1). (ii) Taittinger SA v Allbev LtdUNK ((1993) FSR 641), the Elderflower Champa......
1 books & journal articles
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2015, December 2015
    • 1 December 2015
    ...It has been doubted that civil proceedings could be instituted to restrain such conduct: see Gloag & Sons Ltd v Welsh Distillers Ltd[1998] FSR 718 at [18]. 19.27 Wei JC highlighted that the core interest protected by ‘inverse’ passing off is ‘still goodwill’ and that in a case of ‘inverse’ ......

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