Kurt Bayer

Kurt Bayer is an APNZ reporter based in Christchurch.

Whisky giant leans on Kiwi brand

One of world's top distillers in Scotland claims award-winning New Zealand brand must change its name

NZ whisky DoubleWood (right) and the Scottish distillers' whisky DoubleWood.
NZ whisky DoubleWood (right) and the Scottish distillers' whisky DoubleWood.

A small New Zealand whisky distillery is being threatened with legal action by a global drinks giant for alleged trademark infringement.

William Grant & Sons, the world's third largest producer of Scotch whisky based at the famous Glenfiddich Distillery, has hired top Auckland lawyers Simpson Grierson to get the New Zealand Whisky Company to change one of its award-winning brands.

The Scottish company claims Dunedin DoubleWood breaches the 1986 Fair Trading Act and the trademark will mislead the public into thinking it's connected with Balvenie DoubleWood.

The Oamaru-based company has rubbished suggestions drinkers could be confused. It says the Dunedin DoubleWood bottle features a map of New Zealand and the name is a reference to a cask-ageing process.

New Zealand Whisky Company also argues that while 126-year-old Balvenie launched its DoubleWood brand in 1993, it didn't register it as a trademark here until last year, five years after Dunedin DoubleWood hit the shelves.

"We got the shock of our life when we received legal threats," said New Zealand Whisky Company chief executive Greg Ramsay.

New Zealand Whisky Company has been asked to stop using the DoubleWood trademark in relation to any of its products.

A letter from Simpson Grierson states: "Although our client is willing to take such steps as it considers necessary to protect its intellectual property rights, it also hopes that the matter can be sensibly and quickly resolved."

New Zealand Whisky Company said it doesn't think it has a case to answer. "We feel they don't have grounds for a cease and desist," said Mr Ramsay. "Their legal threat is full of bluster and heavy-handedness. "We don't contravene their existing trademark because we were using it first, and in any case, we say there is no consumer confusion."

On behalf of its client, Simpson Grierson last night said that given the length of time that William Grant & Sons had been using the DoubleWood trade mark in New Zealand and internationally, and the valuable goodwill it had in the trade mark, "it was simply seeking to protect its valid rights from others who have sought to associate themselves with this goodwill.

The Kiwi whisky was produced at the Willowbank distillery in Dunedin, which ceased operation in 1997. The New Zealand Whisky Company bought its stockpile in 2000 and has been ageing it at its Oamaru maturation store ever since.

The 10-year-old Dunedin DoubleWood blended whisky saw off stiff Scottish, Irish and US competition last year to be named the "world's best" at the Mid-West Whisky Olympics in Michigan.

New Zealand Whisky Company is confident over its legal stance. If someone orders a bottle of Dunedin DoubleWood, it will throw in a miniature bottle of Balvenie DoubleWood for free and let the buyers decide.

Other David and Goliath legal battles

• London department store Harrods accused a small roadside cafe in Essex of copyright infringement in 2010, saying their sign was in the same script.

• McDonald's lost an infringement lawsuit against Malaysian fast food outlet McCurry in 2009 after an appeal court ruled the burger giant did not have exclusive rights to the 'Mc' prefix.

• Lawyers for British billionaire Richard Branson last year asked environmentally friendly jeans label 'I Am Not A Virgin' to reconsider their name.

• Dutch clothing company G-Star Raw has taken Australian company Jeanswest to court in New Zealand claiming a style of pants it's selling is a copy, or "substantial copy", of a copyrighted design it owns. The Scotch Whisky Association this year hailed the conviction of a Chinese wholesaler caught selling fake 'Scotch whisky', sayingit was a "major success".

- APNZ

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