Scran & sIPs

Your definitive guide to intellectual property for the Food & Drink industry in Scotland

SCRAN

/skran/

Noun. Food.

"We canny go out on an ​empty belly — any chance ​of some scran?"

Issue 6 - Summer 2022

A message from the editors

Welcome to the sixth instalment of Scran & sIPs – the ​summer edition of the quarterly publication by Marks & ​Clerk that focuses on Intellectual Property and the ​Scottish Food and Drink Sector.


We hope that you have been enjoying the warm weather. ​The summer is now in full swing and the team in Scotland ​are out and about again for in-person events and client ​visits. Most recently, we attended the Anti-Counterfeiting ​Group (ACG) IP Roadshow at Murrayfield. Noëlle Pearson ​gave an interesting talk on the Metaverse, NFTs and ​associated counterfeits – hot topics at the moment, which ​will create some exciting possibilities for the way in which ​we experience food and drink in the years to come.


Our calendar is filling up with exciting food and drink ​events over the next few months. Members of the ​Scotland Trade Mark Team will be attending the Scotland ​Food & Drink Excellence Awards on 8 September, the ​Scotland Food & Drink Conference on 3 October and the ​Scottish Gin Awards on 10 November. You are also likely ​to see some of us at the Scottish Beer Awards and the ​Scottish Whisky Awards in October and November, as ​well as various other events along the way. We are very ​much looking forward to reconnecting with the food and ​drink community in Scotland after two long years of ​lockdown. Please feel free to reach out if you would like ​have a chat over a drink at one of these events. We would ​love to hear from you.


We are delighted to announce that Tomas Karger has become a dual qualified Chartered (UK) and European Patent Attorney after passing his final exams. Sam Mailer is also celebrating some exam success and has become European qualified.


In this edition of Scran & sIPs, Erik Rõuk takes a look at the trade mark regime in India for our Country in Focus piece; Donald McNab and Kate Appleby discuss how Carbogenics is improving the anaerobic digestion process to produce renewable biogas from biowaste; Mairi Rudkin and Jiwon Park talk about patenting biotech inventions in the food and drinks sector; Tomas Karger looks at how AI and data science can be used to lower emissions in the agri-supply chain; and Noelle provides a brief note on “Scotch Whisky” obtaining protection as a certification trademark in the US.


On the subject of whisky, Alex Bruce from Adelphi Distillery talks to us about sustainability and blockchain in our first Client Q&A. Our second Client Q&A is with National Collection of Industrial Food and Marine Bacteria (NCIMB). Finally, we speak to Mairi Rudkin and Ahmed Aziz in our Meet the Team section.


We hope you enjoy the rest of the summer!


Feel free to get in touch and to connect with us on LinkedIn.


Jason Chester & Julie Canet

Jason Chester

Senior Associate

Chartered Trade Mark ​Attorney (UK)

jchester@marks-clerk.com

Julie Canet

Associate

jcanet@marks-clerk.com

Country in focus: India

India is a rapidly growing economy and an increasingly important consumer market because of the sheer size of its population and a burgeoning “middle class”. Notwithstanding what would seem to be a short-term setback due to the impact of COVID-19, the Indian economy looks likely to bounce back in 2022 and is already expected to be one of the fastest growing economies in the world.


It is an important export destination for British food and drink. It holds significant potential for Scottish whisky exports in particular as tariffs on Scotch whisky may be reduced once the India-UK Free Trade Agreement is concluded, with the current expected conclusion of the agreement to happen after Diwali sometime towards the end of the year. The Scotch Whisky Association has been optimistic with its Chief Executive, Mark Kent, indicating that Scotch whisky exports to India could grow by £1 billion over the next five years.


Buoyed by its growing importance as a consumer economy over the past decade, there has been a significant rise in trade mark applications filed in India, with the country overtaking Japan as the fifth country by number of trade mark applications filed.


The significant growth of the Indian economy has also resulted in a rise of the country’s importance as an export destination for Scottish food and drinks products, and increased numbers of trade mark filings. This has also caused the Indian Government to take a hard look at the reputation of India being a difficult jurisdiction for IP protection. A new National IPR Policy was formulated by the Indian government in 2016 to tackle the situation of extremely long examination times, extensive backlogs, incorrect (outdated) Registry records, and significant delays and obstacles to effective IP enforcement.

Country in Focus: India cont'd

Since the implementation of the new National IPR Policy, the Trade Mark Registry has overhauled its internal processes, implemented new technological solutions, and hired more staff. The situation has vastly improved with Trade Mark applications proceeding to Registration in less than seven months in smooth sailing cases.


Indian Trade mark law


Trade marks are regulated under the Indian Trade Mark Act 1999 and Trade Mark Rules 2017. Trade mark law in India has its roots in the common law principles of passing off and equity. There have been strong links with jurisprudence from the United Kingdom. The first Indian Trade Marks Act of 1940 took inspiration from the UK Trade Marks Act of 1938; and Indian Courts also take into account principles and interpretations formed by the Courts in England and the USA in relation to unregistered trade marks.


The Trade Mark Act 1999 was introduced in order to comply with the requirements of the TRIPS Trade Agreement. The Trade Marks (Amendment) Act, 2010, and subsequent Trade Mark Rules have simplified the registration process, introduced new rules for International Trade Marks, permitted the registration of new types of marks, such as sound marks and 3D marks, and allowed for hearings via video conferencing.


The Head Office of the Trade Marks Registry is in Mumbai and branch offices are in Ahmedabad, Chennai, Delhi and Kolkata. For handling Madrid Protocol applications that designate India, examinations and hearings take place at the Head office of the Trademark Registry in Mumbai.


Ownership of trade marks: first-to-file or first-to-use basis?


With its legal traditions rooted in common law, the Indian trade mark system, save for a few exceptions, recognises the ownership of trade marks on a first-to-adopt/use basis. This first to adopt/use rule applies to adoption and use of a trade mark even outside India. Therefore, a food and drinks mark that has been adopted/used by an Entity in the UK, will have priority over a trade mark applied for in India on a "proposed to be used basis".


Unregistered trade marks


The Indian trade mark system recognises and provides protection for unregistered (or common law) trade marks. As such, India does recognise rights of symbols, signs, or words, which have acquired reputation through use in commerce.


In order to enforce unregistered rights in India, goodwill and reputation must subsist in the unregistered trade mark, there must have been a misrepresentation on the part of the user of the subsequent trade mark, and damage, actual or potential to the business of the prior user must be pleaded and possible loss of profit from the misrepresentation.


Although the consumer law rights in unregistered trade marks are recognised, they are more difficult to enforce and give the owner limited rights of enforcement.

Indian Flag against Blue Sky

Country in Focus: India cont'd

Registered trade marks


Registered trade marks provide significant protection over unregistered rights.


  • Owners of registered trade marks in India will have both civil and criminal remedies available to them against unauthorised use by third parties.


  • On a practical level and perhaps most importantly for UK filers, because of the Indian Registry’s practice of relative grounds examination, an earlier trade mark application or registration can be cited as a barrier by the Indian Examiner when he or she assesses the registrability of a new application.


  • Owners of registered trade marks enjoy a comparatively broader aura of protection beyond the goods and services listed within the classes that have been covered by the registration.
  • After registration, owners can use the ® symbol, which indicates a registered Trade Mark. Prior to registration the ™symbol should be used instead.


  • A registered trade mark will also enable the owner to apply to the Indian Customs Authorities to prevent protracted enforcement cases and to help detain the import of infringing goods and suspect consignments. “Infringing goods” under Indian law are defined as goods made, reproduced, put into circulation or otherwise used in breach of IP laws, without the consent of the rights holder or its duly authorised agent. Customs measures only apply to imports of goods that infringe the registered trade mark or the copyright of an owner.


  • A trade mark registration is valid for 10 years and can potentially be renewed indefinitely.


List of well-known trade marks


Unlike the trade mark offices in the UK and the EU, the Indian Trade Marks Registry maintains a list of well-known trade marks. Under Indian trade mark law, if a trade mark has been determined to be well-known in at least one relevant section of the public in India or declared to be well known by any Court or by the ITR, the Registrar shall consider that Trade Mark as a well-known Trade Mark for registration under the Act.


Prior to the Trade Mark Rules 2017, only Courts could declare a trade mark as well-known, but since then a new procedure has been introduced for filing of an application for the determination of a Trade Mark as being well-known by the Registrar.


Having a trade mark determined as well-known in India carries a significant evidential burden but can result in significant benefits (and reduced costs) for the owner in the future.


Once a trade mark is determined as well-known by the Registrar, the Trade Mark Registry shall not register any similar or deceptively similar Trade Mark to the ‘well-known’ Trade Mark across all classes of goods and services. Once the registrar has determined a trade mark as Well-known, the trade mark will be published in the trade mark journal and will be open to opposition for a period of four months. If there is no opposition or the opposition is dismissed, the mark will be entered on the list of Well-known trade marks. Some 117 trade marks are currently listed by the Indian Trade Marks Registry as “well-known”.


Use requirements and non-use cancellation actions


Trade marks can be filed in India by any person claiming to be the proprietor of the trade mark, who has either used it in India or who has a bona fide intention to do so.


A registration may be subject to cancellation if the trade mark has not been put to use for a continuous period of five years from the date of its registration or any subsequent five year periods.


Any interested third party can bring a non-use cancellation action against a registered trade mark. The third party needs to establish that in the previous five-year period the registered trade mark has not been in use. Cancellation action can also be filed on the ground that the registered proprietor never had a bona fide intention to use the mark in commerce.


Examination process


Once an application for registration of trade mark is filed with the Indian Trade Mark Registry, an application number is allotted within one or two working days. The allotted number can be used to track the application through the Online Trade Mark Search Facility.


The trade mark is then examined for correctness (admissibility) and a search is conducted by the Registrar against any any earlier conflicting applications or registrations.


If no issues are raised, the application is accepted and will be allowed to proceed to publication. The Trade mark Registry publishes a journal every Monday with a list of Trade marks that are accepted.


When an application is objected to by the ​Registrar, they will issue an examination report ​and invite the Applicant to respond the Registrar is ​satisfied with the response, the application will be accepted ​and will proceed to. If the ​Registrar is not satisfied with the response, they will fix ​a hearing for the Applicant to appear and address the objections. If the ​objections are waived, the application will be ​accepted and will proceed to publication. If the ​application will be refused the Applicant will have a right to appeal to the ​High Court.


For application for registration of trade marks filed by the national route, a 30-working day turnover for a first examination report following filing is normal. For designations of International Trade Marks, the process can take longer. An Indian trade mark attorney will need to be appointed for corresponding with the Registrar, if any objections are raised.

Country in Focus: India cont'd


Publication and opposition


Once an application is accepted by the Trade Mark Registrar, the trade mark is published in the Indian Trade Mark Journal. If ​no objections are filed by interested third parties within 120 days of the publication, the trade mark will typically proceed to ​registration within 12 weeks from the end of the opposition period.


If the application is opposed by a third party, a hearing will be called by the Trade Mark Hearing Officer.


Both the opponent and the applicant will have the opportunity to appear at the hearing to present their arguments for the ​acceptance or the rejection of the trade mark application. The decision of the Trade Mark Hearing Officer can be appealed to ​the appropriate High Court exercising jurisdiction over the Trade Mark Registry Head office or the branch.


Power of Attorney requirement


A Power of Attorney is required for Indian attorneys to be able to act on behalf of their clients. The Power of Attorney does not ​need to be notarised or legalised. However, this Power of Attorney needs to be Stamped appropriately. Therefore, the Power ​of Attorney needs to be physically provided to Indian Attorneys after execution.

_____________________________________


With thanks to Dr. Mohaan R Dewan, Patent & Trademark Attorney at Podar Chambers in Mumbai for generously providing ​his expertise for this piece.

Author

Erik Rouk

Associate

erouk@marks-clerk.com

Client Q&A with Alex Bruce

Managing Director of Adelphi Distillery

Tell us a bit about Adelphi Distillery – how did you come to join the business and how has it grown over the years?


Adelphi takes it name from The Loch Katrine Adelphi Distillery, once a landmark in the Gorbals in Glasgow. The distillery was built in 1826 and went through various ownership changes until it finally ceased production in the late 1920’s. One of the owners, Archibald Walker, was the Great Grandfather of Jamie Walker who subsequently took the name for his new independent bottling company, which he founded in 1992.


His primary aim was to select really unique single casks of Scotch whisky, produced by other distilleries, and bottle them in a completely natural state. Jamie sold the business to 2 west coast businessmen in 2003 and they appointed me to run it in 2004.


When I took over, we had a meagre 3 casks and around 250 assorted bottles in stock, and it didn’t take long to work through them. I was also hitting the ground just as the Single Malt category was really beginning to take off, and it soon became very apparent that our simple concept of selecting, bottling and selling these very limited whiskies was going to be hampered by dwindling supply.


By 2007 we had built our distribution to 18 markets, including the UK, and demand was outstripping supply. We therefore took the decision to begin planning for our own distillery on land next to one of our owner’s farm and estate in Ardnamurchan. t took us several years in planning, design and build, but we ran the first Ardnamurchan spirit in July 2014 and now, 8 years later, have over 14,000 casks maturing on site.


The team has grown from 2 (in 2004) to 30 today and we operate both from the distillery and our bottling warehouse and offices in Fife.


We started selling Ardnamurchan Single Malt at the end of 2020, and have grown our export markets to 33. Turnover has also doubled in the last 3 years, but we are very aware that this is only the beginning of a long and exciting brand journey.


When you opened Ardnamurchan Distillery in 2014, ​sustainability was arguably not as important to ​businesses or consumers as it is today. We ​understand that the distillery utilises 100% local and ​renewable energy sources, and has the capacity to ​produce 600,000 litres of alcohol per year. What ​inspired you to build a distillery with a commitment ​to sustainability?


Sustainability has been at the forefront of our distillery ​design, build and operation for many years. However, ​given our remote location, it was important to us to take a ​much wider view than just “being green”. Yes, we were ​the first Scottish distillery to be 100% fuelled by a ​biomass boiler, using locally sourced renewable timber, ​but we also wanted to create a tangible circular economy ​on the peninsula that could add value to other ​businesses, create and sustain long term employment ​and, thereby, attempt to retain the next generation and ​reverse the population decline.


Eight years down the line, we are proud to have a 100% ​local team and are working with the local Ardnamurchan ​Trust to help fund further education for local students by ​assigning maturing whisky stocks to them, which they ​can then sell back to the distillery once they turn 18.


We will also be encouraging them to look at the distilling ​industry by offering apprenticeships in due course. In ​addition, all of our co-products (from the distillation ​process) are used locally as animal feed, and this, ​combined with becoming a bulk timber customer, has ​reduced heavy transport on the single track road by 50%.


We continuously strive to improve our environmental ​credentials at the distillery, and now with our product ​packaging as well – we were the first Scotch whisky to be ​available in a 100% recycled board carton.

Client Q&A cont'd

Do you think the whisky industry is doing enough to achieve Net-Zero by 2040?


The Scotch whisky industry is well positioned to achieve Net-Zero within its own manufacture, and hopefully work with the 3rd party supply chain as well.


There are already great examples of adding value to co-products using cutting-edge technology. For example, Celtic Renewables have recently scaled up from University testing to a large-volume plant in Grangemouth, converting the liquid co-product pot ale into biofuel. Other distilleries are becoming test beds for hydrogen fuelling, or producing their own biogas for fuelling their logistics – just 2 examples of large scale development that can be passed on to others both in the industry and further afield.


Packaging is also being reduced, and we hope that the days of lavish imported boxes and glass decanters are in decline.


We are also very fortunate to be supported by the Scotch Whisky Association who are committed to help steer us to Net-Zero as soon as possible.


What is next for Ardnamurchan and the wider Adelphi family when it comes to building a more sustainable industry?


The industry has traditionally worked closely together and this is the same when it comes to sustainability now. Some of our early work with biomass and hydro has been successfully adopted by others and, equally, we have taken inspiration from those that have progressed in other sustainable areas: solar, waste and water reduction/recycling, dedicated green teams, energy reduction, reduction and removal of unnecessary packaging. All proactive and pragmatic examples.


You utilise blockchain technology to provide a secure and immutable model of the full supply chain. Please tells us a bit about how you utilise the technology and what benefits it can bring to businesses and consumers.


To many, blockchain is associated with cryptocurrency but, in fact, its primary purpose is to act as a fully incorruptible and secure, third party ledger. We first looked at the use of the blockchain for storing and authenticating our own production process in 2016. Also still in development, we are now recording all of our day to day production and are able to fully inform the consumer through a QR code on the bottles.


The next stage will be to encourage our suppliers ​(barley, barrels etc.) to add their own data to our ledger. ​Not only will this strengthen our authenticity and ​transparency further, but it will also allow us to collect ​and verify additional data for more detailed carbon ​footprint calculations and monitoring going forward.


You are a Master of the Keepers of the Quaich, and ​we understand that your father Lord Elgin, a former ​Grand Master, was instrumental in setting up the ​society. For our readers that are not familiar with ​the Keepers of the Quaich, please tell us a bit about ​the society and your involvement.


The Keepers of the Quaich was primarily founded to ​acknowledge and thank as many people who work for ​and on behalf of promoting Scotch whisky globally. A ​large portion of its current membership is made up of ​those importing, distributing and selling Scotch in ​overseas countries, but it has also begun to recognise ​more of the homegrown expertise in manufacture and ​production in recent years, which has been a very ​welcome development.


Client Q&A cont'd

There are approximately 3000 Keepers and 200 Masters ​of the Quaich looked after by a management committee, ​patrons and the Grand Master. My father was one of the ​earlier Grand Masters and concentrated on ensuring that ​guests at the biannual ceremonies and dinners were ​suitably entertained with the warmest (and slightly light-​hearted) Scottish entertainment possible.


What have been the biggest challenges resulting ​from Brexit?


The Perfect Storm of pandemic and Brexit has enforced ​rapid rethinking when it comes to supply and logistics. ​Rising costs, lengthy delays for key materials, delayed ​exports due to increased paperwork and lack of shipping ​availability – the list goes on. In real terms, cash flow ​planning has never been more important, along with ​warehouse space with the required increases in stock ​holding of materials and backing up of orders that are ​taking months to be collected.


Fortunately Scotch whisky was, and still is, made to be ​enjoyed and our global consumer base continues to ​grown and understand that philosophy, so we will to our ​best to adapt and continue to send stocks to the furthest ​corners.


Which bottles are your personal favourites from the Adelphi Selection and Ardnamurchan range?


I have been very lucky to be part of the Adelphi selection process for nearly 18 years and, over those years, have witnessed some truly remarkable drams. The only sad part is that single cask whiskies can never be repeated – a once-in-a-lifetime marriage of malted barley, yeast, water, wood, expertise and time – but so many good memories. If I had to pick one, it would be a 1965 ex-Sherry butt (500 litre cask) from Lochside distillery (sadly no more) that we bottled at 46 years old. A true time capsule of flavour and complexity.


Ardnamurchan has been a dream-come-true for me, right from design to early production and, now, witnessing the unique west coast style of the mature whisky. We have been fortunate to bring several batches of our whisky to the market since launch in 2020, and have been truly humbled by the response from all over the world, but one of my personal highlights has been to put together a commemorative bottling for our long-time chief “nose” Charlie MacLean in conjunction with my wife’s company MacLean and Bruce.


Lastly, as summer is upon us, what whisky-based cocktail would you recommend for a warm summer’s evening?


While I enjoy the occasional cocktail, especially whisky-based, I am very much at the consumer end. However, we have been incredibly grateful for the skill and support of our friends at The Good Spirits Co. in Glasgow who have come up with some delicious Ardnamurchan-based cocktails recently.


Given the recent weather, a current favourite is the Piña Colardna and is even available pre-mixed in bottle which makes it so much easier to enjoy!

As told to:

Jason Chester

Senior Associate

jchester@marks-clerk.com

Distilleries rejoice:

enhanced legal protection for ​Scotch Whisky in the US

The Scotch Whisky Association has obtained ​Registration for “Scotch Whisky” as a certification trade ​mark in the US.

Tasting of different Scotch whiskies on outdoor terrace, dram of whiskey


Scotland accounts for the largest share of food and drink exports in the UK. Scotch Whisky is the UK’s largest food and drink export, with more than £4.5bn exported to the US in 2021 alone.


It is estimated that this figure will massively increase given that the tariffs on Single Malt Scotch Whisky were suspended back in June 2021.


As such, it comes as no surprise that the Scotch Whisky Association (SWA) has been pushing for the protection of the term “Scotch Whisky” in the US. Protecting the term “Scotch Whisky” will help to stop copycat products from calling themselves Scotch Whisky or a confusingly similar term.


Since the signing of the US - UK agreement on the mutual recognition of certain distilled spirits/spirits drinks in 2019, the term “Scotch Whisky” has had limited protection in the form of labelling requirements in the US.


However, as of 21 June 2022, the SWA has secured registration of “Scotch Whisky” as a certification mark in the US. This means that anyone wishing to use the term “Scotch Whisky” in respect of an alcoholic beverage will need to make sure that the SWA certifies that the product is from Scotland and meets the standards set out in The Scotch Whisky Regulations 2009 and The Scotch Whisky technical file.


In practical terms, this means that the SWA now has the legal backing in the US to protect the term “Scotch Whisky” and go after individuals and organisations wishing to take advantage of the reputation and renown of Scotch Whisky on non-genuine products.

Author

Noelle Pearson

Associate

npearson@marks-clerk.com

Making Food Waste Easier ​to Digest

In Issue 4 of Scran & sIPs, published in Autumn of 2021, Julie Canet described how food waste collected in our kitchen food waste caddies can be turned into biogas by anaerobic digestion. The biogas produced can be used in the same way as natural gas, such as to produce electricity or heat.


Alternative (and preferably renewable) gas sources are now, more than ever, of vital importance. Anaerobic digestion of food waste into biogas is one method that promises to provide renewable gas whilst also shifting reliance on current major gas producers.


Gas supply crisis – why we can’t rely on our current gas suppliers


In 2021, 90% of the gas consumed in the European Union was imported, with 45.3% provided by Russia, according to the ​European Commission. Since Russia’s invasion of Ukraine, Europe has faced higher energy prices and uncertainty in reliability ​of oil and gas supply. European countries are seeking to reduce reliance on Russian gas imports and, at the same time, ​continue to seek out greener sources of gas to reduce negative environmental impacts.


REPowerEU is a joint European action for more affordable and sustainable energy and aims to terminate the EU’s ​dependence on gas from Russia. One of the goals set out by REPowerEU is to produce 35 billion cubic metres of biogas from ​biowaste such as food waste each year by 2030 (double the previous EU goal). 37 billion euros of targeted investments are ​proposed to support the development of new capacity and infrastructure to accommodate biogas into the gas grid and create ​energy communities.


The UK government offers a number of incentives to support large-scale anaerobic digestion plants, such as the Renewable ​Heat Incentive and the Renewables Obligation.

Modern Biogas Plant

Food Waste cont'd


Biogas production from biowaste – how it works


Biowaste is naturally digested by microorganisms, which ​produce gases including carbon dioxide, water and ​methane as side products. When digestion occurs in the ​presence of oxygen, the main gases generated are ​carbon dioxide and water. However, when digestion ​occurs in the absence of oxygen – in a so-called ​anaerobic processes – the main gases generated are ​carbon dioxide and methane.


Methane is a particularly attractive fuel owing to the ​relatively large amount of heat released on its combustion ​leading to uses in heating and in electricity generation. If ​biowaste is anaerobically digested in a controlled way, for ​example in an industrial anaerobic digester, then the ​methane produced can be collected, cleaned to remove ​unwanted gaseous impurities, and injected directly into ​the gas grid, or it can be used to produce electricity, e.g. ​for the national grid. There are currently