Cork-based distiller challenges Irish Whiskey Association certification mark plan
A row has erupted in the Irish whiskey industry over who should hold the right to certify the sector’s products as legitimate in the US.
The Sunday Independent has learned that whiskey producer West Cork Distillers has challenged an attempt by the Irish Whiskey Association (IWA), the sector’s largest lobby group, to obtain a certification mark in the US covering Irish whiskey. It sought an extension of time to oppose the application for the certification mark, which was granted until January 2022.
The US Patent and Trademark Office (USPTO) says a certification mark is a type of trademark used to show consumers that particular goods and services, or their providers, have met specific standards.
To use a certification mark, a company’s product or service must meet the standards set by the mark’s owner.
In 2018, the IWA, part of Ibec, applied to have “Irish whiskey” registered as a certification mark in the US. In the application, it said the mark is intended to certify that the goods provided have met standards set in the Irish Whiskey Act of 1980, the Irish Whiskey Technical File 2014 and European regulations.
John O’Connell, a co-founder of West Cork Distillers, said the company would “respectfully oppose” the IWA’s certification mark application for Irish whiskey in the US. He acknowledged the “good work” that the IWA is doing to protect the category, but strongly believes that any intellectual property pertaining to Irish whiskey should “belong to the Irish nation and not to any one private commercial entity or trade body”.
O’Connell added he believes the Irish Government should own the certification mark and it reside with the Department of Agriculture. He said he hoped the matter could be resolved with the IWA.
“We believe that through open and honest dialogue, an equitable and respectful solution to this matter can be achieved which will protect the category into the future and will allow the ownership/governance of the Irish whiskey remain in the hands of the Irish nation.”
The move by the IWA has generated a range of views within the industry. A number of distillers oppose the action, although others believe it could help to protect the category in its largest market.
Peter Mulryan, the CEO of Blackwater Distillery, described the application by the IWA for the certification mark as a “disgrace”. He said he believed any mark over the category should be owned by the State, particularly the Department of Agriculture.
Teeling Whiskey Company managing director Jack Teeling said he recognised that, in an ideal world, the mark would be held by the Irish Government. However, in the absence of this, he believed the IWA holding the mark would help protect the sector in its largest market.
The IWA said despite some existing protections in the US, it continues to encounter products and trademark applications that convey the impression a product is an Irish whiskey when it isn’t.
Consequently, the IWA agreed with its members in 2015 that it should seek to strengthen protection of the category in the US by registering Irish whiskey as a certification mark. It said that it wrote to all Irish whiskey trademark holders to obtain consent that their products are legitimate Irish whiskey according to the category’s laws. It subsequently applied to the USPTO in 2018.
“If successful, the registration of Irish Whiskey as a certification mark will benefit all involved in the Irish Whiskey industry and not just the members of the IWA as it will help to protect the entire Irish Whiskey category in its most important market,” the group said. “Obtaining certification would mean Irish legal requirements for Irish Whiskey could be enforced more easily in the US”
The IWA said use of the certification mark would be conditional on compliance with the rules for Irish whiskey, as set out in legislation. It would also ensure the description is not misused in trademark registrations in the US.
“If users breach the rules by selling fake Irish Whiskey, the Association would be able to revoke approval to use the certification trademark and take infringement proceedings.”
The IWA was optimistic it could alleviate concerns. It said the regulations which define Irish whiskey would underpin the basis for the rules. In addition, safeguards in US law would prohibit the certification mark owner from discriminating against those who maintain standards in line with the certification mark.
The IWA said if it were to withhold consent from a company using the mark in a way that is consistent with the rules, they could petition to cancel the certification mark. It said this would prevent possible abuses of the mark.