D’Aquino Bros served suit for ‘flagrant’ infringement of Scotch Whisky trade mark
Intellectual Property June 29, 2018 10:49 pm By Miklos Bolza | Sydney

Liquor distributor D’Aquino Bros has been taken to court again, accused for the fourth time of “flagrant” trade mark infringement for continuing to sell products under the name, Scotch Whisky.

Proceedings were filed on Wednesday by the Scotch Whisky Association (SWA), a UK-based organisation whose role is to “advance the global interests and profile of Scotch Whisky”.

“There is a strong need to deter D’Aquino Bros and [director] Rex D’Aquino from engaging in the impugned conduct in the future,” SWA wrote in its statement of claim.

SWA owns the Scotch Whisky trade mark in Australia, and alleges D’Aquino Bros, Rex D’Aquino, five individuals trading under the Mr Liquor brand, and subsidiary D’Aquino’s Liquor Peisley infringed the mark by labelling its Clansman, Black Scot, and J.B.R. brands as Scotch Whisky.

Whisky cannot be labelled as Scotch unless it is certified by the SWA and satisfies certain characteristics such as being distilled in Scotland, of a certain colour, aroma, and taste, and not contain less than 40% alcohol.

“The conduct of D’Aquino Bros and Rex D’Aquino is flagrant,” SWA wrote. “D’Aquino Bros and Rex D’Aquino have engaged in the conduct … after a long history of litigation with the SWA in relation to their dealings with alcoholic beverages improperly labelled as SCOTCH or SCOTCH WHISKY.”

SWA is seeking a permanent injunction against D’Aquino barring use of the Scotch Whisky mark, or marks that are substantially identical or deceptively similar. It has also requested the destruction of all goods and marketing material relating to the alleged trade mark infringement.

This is the fourth time the SWA has brought Federal Court proceedings against D’Aquino Bros relating to the Scotch Whisky mark. Justice Alan Goldberg AO issued an injunction against the company and its directors prohibiting further trade mark infringement in June 2006 and again in December 2009. In December 2012, Justice John Middleton made similar orders.

The first case management hearing for the latest action is scheduled for August 3 before Judge Middleton.

Earlier this month, one of D’Aquino’s companies, Fernbrew, won a trade mark dispute against the sale and distribution of its Pirate Bay Rum in which liquor producer Patron Spirits contested the name was too close to its own Pryat brand of rum.

Lawyerly has contacted D’Aquino Bros for comment.

King Wood & Mallesons is representing the Scotch Whisky Association.

The case is The Scotch Whisky Association v D’Aquino Bros Pty Ltd & Ors.

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Miklos Bolza

Miklos Bolza has been a journalist for three years. He has written for a variety of publications, including NZ Lawyer, HRD Australia, and Australian Broker. He is currently the Sydney court reporter for Lawyerly.