Scottish Distillery Beats Silly Trademark Dispute Over Geographic Name ‘Port Of Leith’

There must be something about the alcohol business that creates silly trademark disputes over geographic terms. We’ve seen this several times in the past, such as in the whole Ravinia Festival dispute, or the time two breweries fought over a trademark for the neighborhood one of them operated out of. While these don’t always turn out the way I think they should, the fact is that trademarks for geographic locations are supposed to be very, very narrowly granted.

But it gets even weirder when we’re talking about homonyms. In this case, it concerns a trademark dispute between the Douro & Port Wine Institute, an industry association for makers of those types of wine, and a Scottish distillery.

The European Intellectual Property Office has ruled that an Edinburgh distillery may partially continue to use the phrase ‘Port of Leith’ on its bottles after an attempt was made by an association of Port winemakers to ban it. The ruling states that the distillery is permitted to use the term ‘Port’ on its registered spirit products, but not on any future Port or Sherry products.

It was claimed by the Douro and Port Wine Institute that consumers would be “confused” by the distiller’s use of the word ‘Port’ and that the whisky makers would unfairly benefit from the positive historical association with the fortified wine.

You’ve probably already guessed where this is going. The “port” in Port of Leith has nothing to do with wine. Or alcohol for that matter. It’s a literal waterway port north of Edinburgh. The reason for the partial ruling is that the distillery actually does make some port wines along with sherry and whisky. Those wines may need to be discontinued or renamed, though I would argue against that. But the distillery is absolutely free to continue using its name and branding on packaging and in marketing for non-port wine products.

That the DPWI ever thought otherwise is absurd. Telling a business it can’t operate using the geographic name of its own home was never the purpose of trademark law. That’s why demonstrable public confusion, or the very clear potential for such confusion, is so paramount in trademark law. The point isn’t to allow a business to lock up common language, but to keep the public from being fooled or confused as to the origin or association of a particular service or good.

Thankfully, unlike what we saw in the Ravinia case, the EUIPO got this one right.