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Cite as: 2021 GWD 33-438, [2021] ScotCS CSOH_100, [2021] CSOH 100, 2021 SLT 1327

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OUTER HOUSE, COURT OF SESSION

[2021] CSOH 100

A351/19

OPINION OF LADY WOLFFE

In the Intellectual Property cause

THE TOMATIN DISTILLERY COMPANY LIMITED

Pursuer

against

THE TOMATIN TRADING COMPANY

Defender

Pursuer: Lake QC, Mitchell, sol adv; Brodies LLP

Defender: Tariq, MacRoberts LLP

6 October 2021

Introduction

The central issue and the parties

Trademark dispute

[1]

This case concerns a trade mark dispute in which the pursuer alleges that the

defender has contravened its UK trade marks (as after-defined) registered under the

Trademarks Act 1994 ("the Act"). What lies at the heart of the dispute is the defender's

proposal to use "Tomatin" in its trading name and in association with its proposed

development, near the pursuer's distillery. The several applications and proceedings related

to this dispute are noted below (at para [11]).

The pursuer

[2]

The pursuer, who was incorporated in 1985, distils, markets and sells "Tomatin"

Scotch whisky. It operates the Tomatin distillery in Tomatin, Inverness-shire ("the

Distillery"). The Distillery has been in operation since 1897. The pursuer provides distillery

tours at the Distillery. It also has a visitor centre at the Distillery ("the Visitor Centre")

which includes a retail offer of Tomatin-branded whisky and other goods, and a small shop

and bar area.

The pursuer's Marks

[3]

The pursuer has long enjoyed the benefit of a trade mark for "TOMATIN", in respect

of class 33 (Scotch whisky) (UK Trademark No. UK00000844044), which was registered on

18 January 1963 ("the Original Word Mark"). However, in the spring and summer of 2018,

the pursuer registered two additional trade marks, as after-noted, which effectively

extended its trade mark protection to three additional classes of activities, namely,

classes 35, 41 and 43 (hereinafter "the Additional Classes"), which classes correspond to

retail, education and bar and leisure services. It also registered a figurative mark for class 33

as well as the Additional Classes. The trade marks the pursuer obtained in 2018 were:

UK Trademark No. UK00003299605 "TOMATIN" (Classes 35, 41 and 43

retail, education, entertainment and bar services connected with the production and

sale of whisky), with a filing date of 26 March 2018 ("the 2018 Word Mark"); and

UK Trademark No. UK00003314854 "TOMATIN" (figurative mark)

(Classes 33, 35, 41 and 43 Scotch whisky and retail, education, entertainment and

bar services connected with the production and sale of whisky), with a filing date of

1 June 2018 ("the 2018 Figurative Mark").

The pursuer's 2018 Figurative Mark is as follows:

2018 Figurative Mark (per UK00003314854)

I shall refer to the pursuer's 2018 Word Mark and its 2018 Figurative Mark collectively as

"the 2018 Marks", to the pursuer's Original Word Mark and the 2018 Word Marks as "the

Word Marks", and to all three of the pursuer's marks (ie the Original Word Mark and the

2018 Marks) as "the Marks".

[4]

The specification of the Additional Classes in the 2018 MarksThe full description of the

Additional Classes for which both of the 2018 Marks were registered, are as follows:

"Class 35: retail services connected with the sale of whisky and distilled spirits,

beers, food, beverages, calendars, printed matter, magazines, greeting cards,

jewellery, glassware, earthenware, tableware, t-shirts and clothing, caps and

headgear, tea towels, aprons and Christmas tree decorations in the UK;

Class 41: e

ducation and entertainment services all relating to the manufacture,

production, sale, history and consumption of whisky and other distilled spirits;

provision of museum, presentation and exhibition facilities all relating to the

manufacture, production, sale, history and consumption of whisky and other

distilled spirits; provision of visitor centres (for educational and entertainment

purposes) all relating to the manufacture, production, sale, history and consumption

of whisky and other distilled spirits and whisky tasting services (for education and

entertainment purposes);

Class 43

: b

ar services; bars; café and restaurant services; cafes; catering (food and

drink); pubs and public houses; provision of meeting, conference, convention and

exhibition facilities; banqueting services; consultancy services relating to the

production of drinks and alcoholic beverages; corporate hospitality services (food

and drink); provision of information relating to whisky and other distilled spirits;

and whisky tasting services (provision of beverages)."

The defender

[5]

The defender, incorporated on 12 January 2010, owns a plot of land about 300 to 400

metres distant from the entrance to the Distillery ("the Site"). The individual behind the

defender is William Frame, a Scottish businessman who has traded for years via his

principal business entity, Braemore Estates ("Braemore Estates"). He is the sole director of

the defender.

The defender's proposed use of "Tomatin" in association with the development

[6]

The defender wishes to develop the Site and he has promoted a number of planning

applications of which the application in 2018 is the most recent, and which was granted in

November 2018 ("the 2018 planning permission"). The defender's proposed development is

for a hotel, farm shop, large restaurant, drive-through bakery, food outlet, four retail units

and a petrol station ("the Development"). While the name used for the proposal in the

2018 planning application was "Juniper Village", the defender has since dropped that in

favour of using "the Tomatin Trading Company" for the development (precisely when he

did so or when the pursuer became aware of the change of name are contested matters).

The defender's application for its own trade marks

[7]

On 16 January 2019 the defender filed a trade mark application with the United

Kingdom Intellectual Property Office ("UKIPO") seeking to register a complex sign,

incorporating both figurative elements and the word "Tomatin" within the words "Tomatin

Trading Company" ("the Sign" or "the defender's Sign", as the context requires) in respect

of classes 16, 21, 25, 29, 30, 32, 33, 35, 41, 43 and 45. The UKIPO assigned it reference

no UK00003367610 (the "Application"). The defender amended its application in

March 2019 to remove class 33 (Scotch whisky) from the scope of its application. It has also

eschewed any intention of selling the pursuer's whisky at the Development. The overlap as

between the defender's Sign and the 2018 Marks for the classes sought comprises classes 35,

41 and 43 (ie the Additional Classes). I shall refer to the defender's remaining classes, ie

those excluding the Additional Classes, as "the defender's Other Classes".

[8]

The defender's Sign is as follows:

Figurative Sign (per UK00003367610)

The 2018 Figurative Mark and the defender's Figurative Sign

[9]

Having regard to the issues of similarity, alleged contravention and confusion, which

involves comparison of the pursuer's 2018 Figurative Mark and the defender's Sign, it may

assist to depict those side by side:

2018 Figurative Mark (per UK00003314854)

Figurative Sign (per UK00003367610)

Summary of circumstances leading to the principal action

[10]

At some point in time the pursuer became aware of the defender's use of the name

"Tomatin Trading Company" in association with the Development. (The precise point in

time is disputed and the defender relies on a meeting between Mr Frame and two senior

executives of the pursuer on 18 February 2018, as well as some press coverage a few weeks

later, in support of its contention that the pursuer's registration of the 2018 Marks was in

bad faith.) The matters that prompted the pursuer to raise this action include the following:

The change of name and signage for the Development from Juniper Village to

"Tomatin Trading Company";

The defender's operation of a website,

www.tomatintrading.co.uk

("the

Website"), which contained statements about the sale of whisky at the Development,

and which (for a brief period of time) displayed casks of the pursuer's Tomatin

whisky and an image of a jar of strawberry jam containing the brand name

"Tomatin"; and

The defender's intention to use its trading name in association with the

Development.

After the pursuer's agents approached the defender, the images on the Website (referred to

in (2) above), were removed from the Website. (It was this approach that prompted the

defender's amendment of the Application to delete class 33.) However, the pursuer

maintains that the defender's proposed use of the "Tomatin Trading Company" in

association with the Development breaches its Marks in a variety of ways.

The several applications by, and other proceedings involving, the parties

[11]

There are a number of applications made by the parties to the UKIPO, namely:

The pursuer's applications for the 2018 Marks (as defined in para [3], above);

The defender's applications to invalidate the pursuer's 2018 Marks ("the

Invalidity Proceedings");

The defender's application to the UKIPO for its own Sign ("the Application"

and the "Sign", as defined in para [6]); and

The pursuer's opposition to the defender's Application before the UKIPO

("the Opposition Proceedings").

The defender's proposed use of Tomatin has also generated this intellectual property action

("the principal action") and the defender's counterclaim ("the counterclaim").

The scope of the proof

[12]

The proof included all issues raised by parties in the principal action (alleging

infringement of the pursuer's Marks and passing off) and the counterclaim (alleging

invalidity of the 2018 Marks). Furthermore, at the request of the pursuer, the UKIPO

Examiner remitted the Invalidity Proceedings to this court under section 46 (4) of the Act.

The UKIPO Examiner's reasons for the remit were as follows: (i) that to do otherwise would

prejudice the pursuer by causing a delay to the trial of the issues of infringement; (ii) that the

prospects of success of the defender's Application are linked to the validity of the pursuer's

2018 Marks; and (iii) that the decision of this court may result in the withdrawal of the

defender's Application, either in whole or in part. As a result, the UKIPO Examiner further

ordered that the Opposition Proceedings in respect of the defender's Application before the

UKIPO would continue, but with any decision suspended until resolution by this Court of

the Invalidity Proceedings. Accordingly, the subject-matter of the Invalidity Proceedings

forms part of the issues to be determined at the proof.

Outline of the parties' legal cases

[13]

Given the number of legal grounds founded upon by the parties and the scope of the

proof, it may assist a better understanding of the relevance of the different chapters of

evidence to outline parties' legal cases.

The pursuer's case

[14]

The pursuer notes the overlap in the classes as between its Marks and the defender's

Sign. It notes that the defender intends at its Development to offer a range of retail,

hospitality and restaurant services and that particular services are identical with or similar

to those classes for which the Marks are registered, namely, the proposal for a restaurant

and café, and a retail unit selling goods including Scotch whisky. It contends that it is clear

that the services which the defender intends to offer are similar, and in some cases identical

to the classes in which the Marks are registered. There is a likelihood of confusion.

The pursuer's legal grounds of infringement

[15]

The pursuer alleges breaches of sections 10(2) and 10(3) of the Act (which are set out

below, at para [43], collectively "the statutory grounds"), and passing off at common law.

Similarity of the Marks and the Sign

[16]

The pursuer contends that the dominant feature of the 2018 Figurative Mark, the

2018 Word Mark, the Original Mark and the Sign is the word "Tomatin"; that as between the

Original Mark and the Sign, there is identity; and that in making a comparison there are

similarities on visual, aural and conceptual levels.

The likelihood of confusion

[17]

On the issue of confusion (which is relevant to the pursuer's case under section 10(2)

of the Act and to its case of passing off), the pursuer contends that the proximity of the

Development to the Distillery will significantly increase the risk of confusion as between the

Sign and the Marks. A further relevant circumstance is the manner in which the defender

proposes to use the Sign. The pursuer notes that in one of the defender's earlier planning

applications (but not the one resulting in the 2018 planning permission) there had been

photographs of other distilleries and distillery warehouses, and an evinced intention that

features of the Development were to resemble a Scotch whisky distillery (eg a pagoda-like

roof and building materials). From this, the pursuer contends that the defender proposes to

use its Sign in the context of a building development that is next to the pursuer's Distillery

and also designed to look like one. Furthermore, the pursuer operates the Visitor Centre at

which members of the public are given a tour of the Distillery and invited to sample besides

purchase the pursuer's whisky, as well as other branded and non-branded retail items. In

one of its planning applications, the defender described the development as including a

"visitor centre" and an intention to sell whisky (although the defender has since dropped

these elements from its Development).

[18]

In respect of its case for infringement under section 10(2), the pursuer focuses on the

overlap in the classes (ie, the Additional Classes) in the pursuer's Marks and the defender's

Sign and in the use of "Tomatin", which is identical to its Word Marks. It contends that

reputation exists for its use of "Tomatin" and that the pursuer has not consented to the

defender's use.

[19]

While section 11(2) of the Act provides the circumstances in which a registered trade

mark is not infringed (including the use which is descriptive of geographical place or

origin), so long as that use is "in accordance with honest practices in industrial and

commercial matters", the pursuer's position is that this provision will not protect the

defender's proposed use of the Sign in association with the Development. This is because it

contends that "Tomatin" is not descriptive of geographic origin and the defender's usage is

not in accordance with honest practices in commercial matters. Rather, the pursuer's

position was that it is used in a way that is not fair and does not protect the legitimate

interests of the pursuer.

Alleged infringement under section 10(3) of the Act

[20]

In respect of its case for infringement under section 10(3) of the Act the pursuer's

position is that it has built up significant goodwill in the use of the Marks and that

reputation also exists. The pursuer does not consent to the defender's use of the Sign in the

course of its business.

[21]

The pursuer relies on the same arguments and evidence about confusion and

similarity it had advanced under section 10(2) for the purposes of establishing an

infringement under section 10(3) and to show that the use of the Sign gives rise to a link

with the Marks for its case under section 10(3). The requirement in section 10(3) of the Act

for a link requires less than the confusion needed for infringement under section 10(2).

[22]

The pursuer contends that the defender's proposed uses of the Sign will take unfair

advantage of the distinctive character and repute of the Marks. It relies on the defender's

promotional materials as evidencing a deliberate intention to take advantage of the

pursuer's goodwill (this was based on the material referred to in para [10(2)], above).

Further, confusion in which members of the public erroneously believe that the defender's

Development is associated with the pursuer indicates that the distinctive character of the

pursuer's Marks is being eroded.

[23]

On the issue of due cause, the pursuer's position is that it has made use of the name

"Tomatin" for a considerable time in a business in which the use of distillery names is

important. The pursuer has invested significant sums of money over several years in

promoting the Marks

and it has established a reputation associated with the Marks.

Conversely, the pursuer argued that there is no reason why the defender requires to use the

name "Tomatin" for its business. The manner in which it is used in the name "Tomatin

Trading Company" is not such that it identifies its origin. It has no existing reputation or

good will in the word. The defender has no legitimate basis for the use of the Sign and it is

without due cause.

[24]

It contends that, again, section 11(2) of the 1994 Act does not provide a defence.

Passing off

[25]

The pursuer identifies the constituent elements of passing off as follows:

the pursuer's goods or services have acquired a goodwill in the market and

are known by some distinguishing name, mark or other indicium;

there is a misrepresentation by the defender (whether or not intentional)

leading or likely to lead the public to believe that goods or services offered by the

defender are goods or services of the pursuer. Just because the sign used is

descriptive does not avoid the possibility of confusion; and

the pursuer has suffered, or is likely to suffer, damage as a result of the

erroneous belief engendered by the defender's misrepresentation that the source of

the defender's goods or services is the same as the source of those offered by the

pursuer.

In reliance on its submission in respect of the statutory grounds, it contends that the

requirement for goodwill is met and that the overall manner in which the defender intends

to use the Sign is such that it will amount to a misrepresentation likely to lead the public to

believe that the defender's goods and services are offered by the pursuer. In a business such

as that of the pursuer, in which branding by place name is important, this will be

detrimental to its business.

The defender's registration of the Sign

[26]

The pursuer noted that if the court considers that the defender's use of the Sign

amounts to infringement under either section 10 of the 1994 Act, or the law of passing off,

then in terms of subsections 5(2)(b), 5(3)(a) and 5(4) of the Act they should not be registered

as trade marks. These sections, which contain some of the relative grounds on which

registration of a sign may be refused, reflect some of the conditions to be established in the

pursuer's grounds for infringement. In particular, the conditions of similarity between a

sign and an earlier trade mark and the "likelihood of confusion" are contained in

section 5(2)(b); the condition of being "identical with or similar to" an earlier mark and the

use of the later mark being without due cause, taking unfair advantage of or being

detrimental to the distinctive character or repute of the earlier mark are contained in

section 5(3)(a); and passing off is referred to in section 5(4). These provisions demonstrate

how the pursuer's case of infringement is inextricably linked to the defender's Application .

[27]

The pursuer's position is that even were the defender's Application granted by the

UKIPO, section 11(1) of the Act would provide the defender solely with a defence in respect

of the use of that figurative mark in the classes in respect of which it was registered.

Section 11(1) would provide the defender with no broader defence to the wider claims of

trade mark infringement and passing off the pursuer alleges.

The pursuer's response to the defender's counterclaim

[28]

The pursuer resists the defender's counterclaim, which seeks invalidation of the

2018 Marks on three of the grounds in section 3 of the Act, namely that the pursuer's Marks

are not registrable under any of sections 3(1)(c) (descriptive of geographical origin of goods

or services), section 3(3)(a) (contrary to public policy), and section 3(6) (bad faith) of the Act.

[29]

The pursuer's position is that in considering the 2018 Word Mark it is necessary to

have regard to the fact that prior to the application for registration it had acquired a

distinctive characteristic as a result of the use made of it and the investment in it by the

pursuer over an extended period. The Marks have been used within the UK and worldwide

for over 100 years to denote goods and services associated with the Distillery. The pursuer

uses the "Tomatin" mark on its goods and services to denote the trade origin of those goods

and services, and not as an indicator of geographical origin. Indeed, the pursuer's position

is that it has been doing so prior to the existence and identification of Tomatin as a village.

Its use of the "Tomatin" mark includes both the sale and marketing of whisky, and the

operation of the Visitor Centre at the Distillery and the goods that are sold there. The

evidence indicates that it has acquired a distinctive characteristic. In this regard the court

requires to consider matters from the standpoint of the observant and circumspect consumer

rather than of individuals that are local to the village of Tomatin. "Tomatin" is not well

known as a place name outwith its immediate locality and the village derived its name from

the Distillery. Simply because a name is a geographical name, does n ot mean that it is

automatically associated in the trade of goods and services from the perspective of the

relevant consumer as an indication of geographic origin.

[30]

Further, to the extent that reliance is placed on the word "Tomatin" within the

2018 Figurative Mark, the same considerations apply. In addition, it should be noted that

the prohibition in section 3(1)(c) of the Act (containing the absolute grounds of refusal of

registration) applies only to signs which consist exclusively of signs which designate

geographical origin. This is not the case in relation to the 2018 Figurative Mark. It is not

correct to state, as the defender avers in its counterclaim, that the additional elemen ts in the

2018 Figurative Mark are de minimis in the context of the mark as a whole.

[31]

The pursuer made the point that the continued registration of the 2018 Marks would

not prevent other businesses in Tomatin from using the word "Tomatin" as an indicator of

geographic origin, provided their use was in accordance with h onest practices in industrial

and commercial matters as set out by section (2)(b) of the 1994 Act, but the defender does

not fall within this exception.

[32]

Finally, the pursuer contends that the 2018 Marks were sought in the context of an

established business which had owned and used the "Tomatin" mark for a considerable

time. It was a legitimate attempt to protect its business interests as it was envisaged that

they would develop these in the future. The registration of the 2018 Marks was not in any

sense an abuse of the trade mark system. The application for them was accordingly not

made in bad faith.

The defender's response to the pursuer's case

The fundamental challenge to the pursuer's case

[33]

The defender submits that there is an overarching flaw in the pursuer's case that

applies both to its statutory grounds for trade mark infringement (under sections 10(2)

and 10(3)) and passing off. Trade mark infringement in terms of section 10(2) or (3) of the

Act requires use of an allegedly offending sign "in relation to goods or services". While the

pursuer avers that the defender "has already commenced offering or supplying goods

and/or service signs similar to the Marks" and that it is "reasonably apprehensive that the

defender will continue to do so", as a matter of fact (i) no building work has commenced at

the Site and (ii) the defender has not used the "Tomatin" and/or "Tomatin Trading

Company" sign "in relation to goods or services", as required in section 10 of the Act.

[34]

The defender observed that, while the pursuer might have a potential claim for trade

mark infringement in the future when the "Tomatin Trading Company" sign is being used

"in relation to goods or services", such as in advertising or promotion of the Development

when its plans are more advanced, however, its position was that the pursuer's action is

premature. Indeed, it contended that it would be prejudicial to the defender for the court to

decide the principal action on the basis of only a potential for future trade mark

infringement. While there were several strands to this argument, in short, it was not for this

court to speculate about whether any potential future use of the "Tomatin Trading

Company" sign in relation to particular goods and/or services will infringe the pursuer's

trade marks. The assessment for trade mark infringement requires the court to undertake a

comparison between the goods and/or services for which the trade mark is registered with

the goods and/or services for which the alleged infringer is using the offending sign and also

to do so for the purposes of establishing if there is confusion. The defender's contention is

that such an exercise is inept or, at best, speculative, where, as here, the Development has not

been built and no goods or services are yet offered. Any attempt to make a comparison must be

speculative. Nor, in those circumstances, is it possible to identify the goods and/or services,

but which identification is vital to the assessment of the "likelihood of confusion". For the

same reason, it contends that the court will be unable to examine the objective conditions

under which the goods and/or services may be present on the market for the purposes of

assessing the likelihood of confusion. In these circumstances, the nature of any alleged trade

mark infringement in the future is highly speculative as neither has the Development been

built nor final decisions made in relation to the sub-brands of the facilities at the

Development. Accordingly, it argues, the pursuer's case is bound to fail in circumstances

where the defender's Sign is not being used in relation to goods or services.

The prejudice argument

[35]

The defender has a distinct argument that it would be prejudicial for the court to try

to determine the pursuer's case essentially for an anticipated future breach as this would

be to ignore the fact that the defender's Application to the UKIPO is outstanding, and over

which that body has exclusive jurisdiction. If the defender's Application is granted, there

would be no breach of the pursuer's Marks.

The challenge in the counterclaim to the pursuer's 2018 Marks

[36]

The defender lodged the counterclaim, seeking declarators that the 2018 Marks are

invalid in terms of sections 3(1)(c), 3(3)(a) and 3(6) of the Act. If either of the 2018 Marks is

declared invalid (which may extend to all or some of the Classes for which it is registered)

on one or more of the grounds of invalidity, it is as if they were never registered. In brief,

the grounds of alleged invalidity are that Tomatin is descriptive of geographical origin, that

it is contrary to public policy and that the 2018 Signs were registered in bad faith. There is a

significant degree of overlap in the arguments and evidence relevant to the first two

grounds of the defender's invalidity challenge.

[37]

Section 3 of the Act provides for grounds, described as "absolute grounds", for

refusal of registration of a trade mark. By virtue of section 47(1) of the Act, a registered

mark may be invalidated on any of the grounds in section 3 of the Act on the basis that they

ought never to have been registered. The three grounds the defender relies on in its

challenge to the validity of the pursuer's 2018 Marks are as follows:

Section 3(1)(c) ("the geographical origin ground"): The defender contends

that "Tomatin" is a descriptor of geographical origin and, given that a trade mark

which consists exclusively of a sign or indication which may serve, in trade, to

designate the geographical origin of goods or services, it shall not be registered

(unless it has acquired a distinctive character as a result of the use made of it);

Section 3(3)(a) ("the public policy ground"): The defender's grounds of

challenge under sections 3(1)(c) and 3(3)(a) effectively proceed on the same basis. As

a matter of public policy the pursuer should not be permitted to monopolise a place

name which is capable of serving as a geographical indicator for those goods and/or

services. The public interest requires that all signs or indications which may serve to

designate characteristics of the goods or services in respect of which registration is

sought remain freely available to all undertakings in order that they may use them

when describing the same characteristics of their own goods or services. This is

known as the "need to keep free" principle; and

Section 3(6) ("the bad faith ground"): A trade mark application made without

any intention to use the mark in relation to the goods and services covered by the

registration constitutes bad faith, if the applicant for registration of that mark had the

intention either of undermining, in a manner inconsistent with honest practices, the

interests of third parties, or of obtaining, without even targeting a specific third

party, an exclusive right for purposes other than those falling within the functions of

a trade mark.

[38]

The factual basis the defender relies on for the first two grounds of invalidity is that

both the Tomatin Estate ("the Estate") (established in the 17th century) and Tomatin village

("the village") predate the Distillery's foundation (in 1897). The name of the Distillery is

derived from the Estate. In any event, as a result of the village's location adjacent to the A9

(and lying between Perth and Inverness), it attracts both local consumers of goods and/or

services as well as tourists. The goods and/or services for which the 2018 Marks are

registered are all the types of goods and/or services that are located in most places in the

United Kingdom, including small villages such as Tomatin. Therefore, an average consumer

of retail services connected with the sale of food and beverages is likely to consider that the

word "TOMATIN" is the geographical indicator of where those services are provided. The

relevant class of person for the goods and/or services in classes 33 (with the exception of

Scotch whisky for which the pursuer has acquired distinctiveness), 35, 41 and 43 might

associate the "TOMATIN" name with the name of the village in which those goods and/or

services are provided. There is a particular likelihood of this association in relation to the

services in classes 35, 41 and 43 where the average consumer is likely to have a connection

with the village of Tomatin either as a local resident or someone who intends to pass through

or near Tomatin. The defender also notes that there are a number of businesses and amenities

within the area of Tomatin that use and trade under the "TOMATIN" name. The defender

intends that the Development, which is situated in Tomatin, will include a hotel, farm shop,

café, drive-through bakery, food outlet, four retail units and fuel filling station. The defender

should be entitled to use "TOMATIN" as a geographical indicator of those goods and/or

services.

[39]

In respect of the defender's third ground of invalidity, the bad faith ground, the

defender's case is that the pursuer was aware of the defender's intended use of the "Tomatin

Trading Company" name for the Development at the time of filing for the registration of the

2018 Marks. It relies on two chapters of evidence: (i) the meeting the defender's Mr Frame had to

discuss the proposed Development with the pursuer's Mr Bremner and Mr Anderson at a

meeting on 17 February 2018 ("the February 2018 meeting"); and (ii) the press coverage of

the defender's plans for the proposed Development under the "Tomatin Trading

Company", as a "hotel, restaurant and retail development" on 21 March 2018 and on

subsequent days. The pursuer submitted its trade mark application for the 2018 Word Mark

on 26 March 2018, within days of the widespread press coverage about the Development.

The pursuer thereafter submitted its trade mark application for the 2018 Figurative Mark on

1 June 2018. The applications for the 2018 Word Mark and 2018 Figurative Mark covered the

services that had been announced in the press as forming part of the proposed

Development.

[40]

The defender contends that in the whole circumstances, the purpose was to obstruct

the defender's use of "Tomatin Trading Company" in relation to the Development. Indeed,

the defender contends that the pursuer filed the applications as part of a deliberate strategy of

seeking a very broad protection for the "TOMATIN" mark regardless of whether it was

commercially justified. In terms of section 32(3) of the 1994 Act, when making an application

to register a trade mark, an applicant must state that the trade mark is being used or that

there is a bona fide intention that it should be so used. It surmised that the pursuer has made

a false, or partially false, declaration to obtain the protection of the 2018 Marks in respect of

the goods and/or services for which they are registered. In these circumstances, the

2018 Marks should be invalidated in terms of section 3(6) as the applications were made in

bad faith.

Responses to the pursuer's case on the merits: whether the defender has infringed the

pursuer's Marks

[41]

The defender's primary position is that the "Tomatin Trading Company" sign is not

being used in relation to goods or services at this time and, accordingly, the pursuer's claim for

trade mark infringement cannot succeed.

[42]

If, contrary to the defender's primary position, the court was satisfied that there is

use of the Sign in relation to goods or services, the defender contends:

That if the 2018 Marks are invalidated, the pursuer's claim for trade mark

infringement of the 2018 Marks fails. In that circumstance, the pursuer's claim for trade

mark infringement would rest only on the Original Word Mark. The Original Word

Mark is only registered in relation to Scotch whisky and does not overlap with the

defender's proposed activities at the Development. It has a filing date of 18 January

1963. The defender takes no issue with the validity of the Original Word Mark in

these proceedings;

If the court refuses to invalidate the 2018 Marks in full, or there is partial

invalidity in relation to specific goods and/or services, the court will then need to

conduct an assessment of whether there is trade mark infringement of the 2018 Marks

(to the extant not invalidated) and the Original Word Mark in terms of section 10 of the

Act. There are discrete issues that arise, namely:

The defender does not propose to use the "Tomatin Trading

Company" sign on Scotch whisky, which is fatal to the pursuer's case of trade

mark infringement of the Original Word Mark;

Many of the defender's proposed activities are not similar to the

goods and services for which the 2018 Marks are registered (eg although the

pursuer has registered the 2018 Marks for Class 43, it has not done so to cover

the provision of hotels, holiday and tourist accommodation and hospitality

services (accommodation); and classes 16, 21, 25, 29, 30, 32 and 45), and, as

there is no similarity between these respective goods and/or services as

required in section 10(2) of the Act, this is fatal to the pursuer's case of trade

mark infringement of the 2018 Marks in relation to those goods and/or

services ("the dissimilarity issue");

In relation to the issues of similarity and confusion, there is no

likelihood of confusion. There are clear visual, phonetic and conceptual

differences between the defender's Sign and the pursuer's Marks. While the

common element is the word "TOMATIN", this is a geographical location in

Scotland. Furthermore, in the context of the 2018 Marks where there is no

acquired distinctiveness in relation to those goods and/or services, the

common element lies in a word that is capable of being descriptive of the

geographical origin of the goods and/or services in question. The defender's

"Tomatin Trading Company" sign incorporated the words "TRADING

COMPANY". The average consumer, perceiving a mark as a whole, would

understand the use of the word "TOMATIN" in the defender's "Tomatin

Trading Company" as a geographical indicator of where those goods and/or

services are provided. There is no likelihood of confusion;

The defender's position is that section 10(3) of the Act is not engaged

in this case. This section applies to well-known trade marks. The reputation

of a trade mark must be established in the relevant territory in relation to the

relevant section of the public as regards the goods or services for which the

mark is registered. The pursuer's Marks do not enjoy such a reputation

(outwith class 33 for the Original Word Mark);

The defender also invokes the defence in section 11(2)(b) of the Act,

which provides that a registered trade mark is not infringed by the use of

signs or indications which concern the geographical origin of the goods

and/or services, provided that use is in accordance with honest practices in

industrial or commercial matters. It use fulfils that proviso. The defender's

use of "Tomatin" and/or "Tomatin Trading Company" sign is descriptive of

the geographical origin of the goods and/or services being provided. The

defender has used the signs in accordance with honest practices in industrial

or commercial matters. If there was a likelihood of confusion, this will not

disqualify the use from being in accordance with honest practices if there is a

good reason why such a likelihood of confusion should be tolerated (Samuel

Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2012] FSR 7, at

paragraph 117). The good reason in this case is that the defender requires to

use the sign to indicate where its goods and/or services are provided.

Finally, in relation to passing off, the defender relied on its submission that it is

not supplying goods and/or services under the "Tomatin Trading Company" sign at

this time and therefore the pursuer's claim for passing off cannot succeed. In t h e

even t t h e cou r t was satisfied that the defender has supplied goods and/or services

under the "Tomatin Trading Company" sign, or that the absence of such is not a bar

to a passing off action, the defender contends that the pursuer's protectable goodwill

is restricted to its existing business namely, distilling, maturing and producing its

single malt whisky under the "Tomatin" brand as well as in its Visitor Centre and

whisky tasting tours. The pursuer has no goodwill in respect of most of the services

included within the specification of the 2018 Marks. Further, the proposed

Development will include a hotel, farm shop, café, drive through bakery, food outlet,

four retail units and fuel filling station. In this case, the absence of a common field of

activity was fatal to establishing a likelihood of deception. The defender's use of the

"Tomatin Trading Company" sign will not cause a substantial number of the

pursuer's customers (who will be consumers of single malt whisky) to be misled into

purchasing the defender's goods and/or services, believing that they are provided by

the pursuer. In these circumstances, the defender has not, and will not, pass off its

goods and services as those of the pursuer.

The statutory provisions

[43]

The parties referred to a number of sections of the Act. I set out the terms of only

those to which frequent reference was made. (Other provisions are noted where necessary.)

The pursuer's statutory grounds of infringement are in section 10(2) and 10(3). So far as

material, section 10 provides:

"10

Infringement of registered trade mark.

(1)

A person infringes a registered trade mark if he uses in the course of trade a

sign which is identical with the trade mark in relation to goods or services which are

identical with those for which it is registered.

(2)

A person infringes a registered trade mark if he uses in the course of trade a

sign where because--

(a)

the sign is identical with the trade mark and is used in relation to

goods or services similar to those for which the trade mark is registered, or

(b)

the sign is similar to the trade mark and is used in relation to goods or

services identical with or similar to those for which the trade mark is

registered, there exists a likelihood of confusion on the part of the public,

which includes the likelihood of association with the trade mark.

(3)

A person infringes a registered trade mark if he uses in the course of trade, in

relation to goods or services, a sign which--

(a)

is identical with or similar to the trade mark

(b)

where the trade mark has a reputation in the United Kingdom and the

use of the sign, being without due cause, takes unfair advantage of, or is

detrimental to, the distinctive character or the repute of the trade mark.

(3A) Subsection (3) applies irrespective of whether the goods and services in

relation to which the sign is used are identical with, similar to or not similar to those

for which the trade mark is registered.

[...]

(4)

For the purposes of this section a person uses a sign if, in particular, he--

(a)

affixes it to goods or the packaging thereof;

(b)

offers or exposes goods for sale, puts them on the market or stocks

them for those purposes under the sign, or offers or supplies services under

the sign;

(c)

imports or exports goods under the sign;

(ca)

uses the sign as a trade or company name or part of a trade or

company name;

(d)

uses the sign on business papers and in advertising; or

(e)

uses the sign in comparative advertising in a manner that is contrary

to the Business Protection from Misleading Marketing Regulations."

The guidance derived from the case law on the conditions to be met in order to establish

infringement of the statutory grounds is summarised at paragraphs [259] and [260], below.

The defender relies on the defence in section 11(2). So far as material, section 11 provides:

"11

Limits on effect of registered trade mark.

(1)

A registered trade mark is not infringed by the use of a later registered trade

mark where that later registered trade mark would not be declared invalid pursuant

to section 47(2A) or (2G) or section 48(1).

[...]

(2)

A registered trade mark is not infringed by--

(a)

the use by an individual of his own name or address,

(b)

the use of signs or indications which are not distinctive or which

concern the kind, quality, quantity, intended purpose, value, geographical

origin, the time of production of goods or of rendering of services, or other

characteristics of goods or services,

[...]

provided the use is in accordance with honest practices in industrial or

commercial matters."

[44]

The defender's counterclaim relies on three of the absolute grounds for refusal of

registration in section 3 (and which also are the grounds for invalidity, by virtue of section

47). So far as material, these are:

"3.

Absolute grounds for refusal of registration

(1)

The following shall not be registered

(a)

Trade marks which consist exclusively of signs or indications which may

serve, in trade, to designate the kind, quality, intend purpose value,

geographical origin.....or other characteristics of goods and services,

[...]

Provided that, a trade mark shall not be refused registration by virtue of paragraph

...(c) above, if, before the date of application for registration, it has in fact acquired a

distinctive character as a result of the use made of it.

[...]

(3)

A trade mark shall not be registered if it is

(a)

contrary to public policy or to accepted principles of morality,

[...]

(6)

A trade mark shall not be registered if or the extent to which that application

is made in bad faith."

The proof

Witnesses

The pursuer's witnesses

[45]

The pursuer called the following witnesses to fact:

Stephen Bremner, the pursuer's managing director, spoke to the pursuer's

trade marks; how they are used; the circumstances in which the 2018 Marks were

applied for; the pursuer's commercial activities; the reputation of, and awards won

by, products bearing the Marks; the pursuer's goodwill in the Marks; how the

pursuer promotes the Marks; the meetings with Mr Frame in February 2018 and

February 2019; how and when the pursuer became aware of the defender's

Application; the area around the Distillery and the various shops/businesses which

have used the name "Tomatin"; the defender's activities with respect to the planned

development next to the Distillery; how potential customers of the pursuer are being

"deceived" by the defender's use of "Tomatin"; the extent to which the name

"Tomatin" is associated in the mind of the relevant public with the pursuer's

products and services and not a locality; and the defender's use of Tomatin not being

in accordance with honest business practices;

Robert Anderson, the former managing director of the pursuer, spoke to the

pursuer's brands and trade marks, and the meeting in February 2018 which was

attended by him, Mr Bremner and the defender's Mr Frame;

Scott Adamson, the pursuer's Global Brands Ambassador, spoke to the

history of the Tomatin Distillery and the area of Tomatin; the pursuer's brands; how

the pursuer promotes its Tomatin single malt; the reputation of and awards won by

Tomatin single malts; the pursuer's goodwill in the Tomatin brand and its Marks;

and the public's association of the name "Tomatin" with the pursuer's products and

services;

Graham Eunson, a director of the pursuer, spoke to the defender's

development site; the confusion as to whether the pursuer is behind the defender's

development at the site; and the pursuer's plans for the Visitor Centre at the

Distillery;

Jennifer Masson, Head of Brand for Tomatin Single Malt, also spoke to the

pursuer's brands; the use of heraldic crest logos in the whisky industry; the growth

of the Tomatin single malt whisky brand; the advertisement, marketing and

promotion of the Tomatin single malt whisky as a brand; the pursuer's marketing

reviews and events; the pursuer's website; the pursuer's social media platforms; the

pursuer's app; the awards won by Tomatin single malt; the pursuer's collaborations

with food and drink manufacturers and others in the food an d drink industry; the

branded goods sold in the Visitor Centre;

Brian Gibson, Joint Managing Director of the independent wine and spirits

retailer, T.B Watson Limited of Castle Douglas, spoke to his sales of Tomatin malt

whisky; the reputation and quality of Tomatin single malt; the promotion by the

pursuer of the Tomatin brand; the services offered at Tomatin Distillery and the

products sold there other than whisky; and

Guy Dominic Hodcroft, a buyer for a specialist online retailer, Master of Malt,

t/a Master of Malt, Unit 1 Ton Business Park, who also spoke to the Tomatin Whisky

Brand and other products which are part of that brand; Tomatin Village.

The pursuer's expert

[46]

The pursuer also called Charles MacLean as an expert witness. He produced a

Report and Supplementary Report covering: the history of Tomatin and the Tomatin

Distillery; Tomatin's single malts; the Tomatin Distillery Visitor Centre and ancillary

services; the pursuer's reputation and goodwill in its trade marks; the pursuer's

2018 Figurative Mark; the pursuer's use and proposed use of its Marks; the defender's

proposed use of its Sign; and the impact of the defender's use of its Sign on the pursuer's

reputation and business.

The defender's witnesses to fact

[47]

The defender called the following witnesses to fact:

William Frame, who is the sole director of the defender. He spoke to the

incorporation of the defender, the plans for the development, the defender's Website,

Mr Frame's meetings with Mr Stephen Bremner of the pursuer, the importance of the

name of the Development, the defender's trade mark Application, the defender's

applications to invalidate the pursuer's 2018 Marks, and to respond to the alleged

infringements of the pursuer's Marks and passing off;

Simon Bath, a consultant to the defender, spoke to the defender's business

and the proposed Development. He also spoke about the village of Tomatin and use

of the name "Tomatin";

Edward Usborne, former Chairman of Tomatin Community Council, spoke

to his meeting with Mr Frame and Mr Bremner in 2019, and the Tomatin Community

Council meeting in 2019 at which Mr Frame spoke about the Development and the

dispute. He also spoke about the village of Tomatin, the wider community and the

various businesses and amenities which use the name "Tomatin";

George Macleod, former owner Tomatin Country Store Limited and Tomatin

Country Inn, who spoke to his business' use of the name "Tomatin" and other local

businesses and amenities which use the name "Tomatin";

Lord Macpherson, owner Tomatin Firewood, spoke to the Tomatin

community, the Tomatin business community, his business' use of the name

"Tomatin" and other local businesses and amenities which use the name "Tomatin";

John McGowan, an enquiry agent, spoke to his investigation of the pursuer's

2018 trade marks on 2 October 2020 and his report ("the Inquiry Report"), which

described the retail and refreshment provision offered at the Visitor Centre at the

time of his visit to it; and

Peter Lederer, former Chairman of Gleneagles Hotel and Visit Scotland and a

former director of Diageo, spoke to the proposed Development, the pursuer's

business, the use and knowledge of the name "Tomatin" and the use of geographical

names in relation to commercial operations.

[48]

The defender also called an expert, Iain Russell, a whisky writer and former archives

consultant at Chivas Brothers and Brands Heritage Manager at Glenmorangie. Mr Russell

spoke about the village of Tomatin and use of the name "Tomatin". He also spoke about the

history of the Tomatin Distillery and the history and sales of Tomatin Scotch whisky and

Visitor Centre, as well as the issue of Tomatin's reputation.

Objections to passages of evidence in the witness statements

[49]

Parties lodged notes of objections to passages in the other side's witness statements

("the pursuer's Note of Objections" and the "defender's Note of Objections", respectively,

and collectively "the Notes of Objections"). For ease of reference and given the number of

objections, the Notes of Objections are contained in Appendix 1 to this Opinion, as are my

determinations of those objections. I have given effect to my decisions on those objections in

my consideration and determination of the many issues in this case.

Documentation considered at proof

[50]

Consistent with commercial practice, the evidence in chief of the parties' witnesses at

proof was by adoption of their witness statements and any supplementary statements,

augmented to some extent by evidence in chief, followed by cross-examination. In addition

to their witnesses to fact, the parties led opinion evidence from their respective experts,

Charles MacLean and Iain Russell, two distinguished writers on the whisky industry, who

spoke to their reports. The parties also produced a joint bundle of productions, a joint

bundle of authorities, draft notes of argument, a joint minute and a joint statement of agreed

legal principles. After the close of evidence, parties were afforded two weeks in which to

produce their written submissions and a further week to produce their supplementary

written submissions, before their oral submissions were heard over 2 days. I have had

regard to all of these materials. I do not propose to rehearse the contents of these documents

or the oral submissions.

Uncontroversial or unchallenged evidence, or terms of core documentation

[51]

The pleadings in the principal action and counterclaim are very full, reflecting the

number and complexity of the issues. They contain extensive averments of background

factual matters. While many of those factual averments are not admitted, they were not

challenged at proof. There were chapters of evidence which, though not formally agreed,

were not controversial. These chapters included the history of the Distillery, the nature of

the whisky industry in Scotland and how the market in single malt whiskies has emerged in

the last few decades, or the defender's various planning applications for the Site. It will be

apparent from the witness summaries that there was substantial overlap in the topics the

witnesses spoke to. I do not propose to repeat evidence of one witness on matters also

spoken to by another witness for the same party. Accordingly, I propose to summarise this

uncontested or uncontroversial evidence in the next sections, and to do so without

attributing every statement to an individual witness. I will also incorporate the matter s

agreed in the joint minute. Where appropriate, I will also include evidence which was not

agreed, but which, in the end, was not challenged in cross-examination or which was not

otherwise contradicted by other evidence I have accepted. The qualitative assessment (eg

whether there was "substantial" good will, whether the Tomatin brand was "well-known"

etc) are of course some of the issues at the heart of the dispute between the parties and are

dealt with when I come to consider the contested chapters of evidence.

The location of and signage for the village and the Distillery

[52]

As one of the issues is whether a passing driver or visitor might confuse the Site for

the Distillery, it is necessary to describe their relationship to each other, and to Tomatin

village and the A9, as well as the existing signage. The Site which the defender wishes to

develop formerly accommodated the "Little Chef-Tomatin" at the junction of the A9 and the

turn off for Tomatin village ("the junction"). The junction with the A9 (which is signposted

"Tomatin") is approximately 1 mile north of Tomatin village ("the village") and it serves

both the Site and the Distillery. The signs a traveller driving North on the A9 would see on

approaching the junction are show below:

The village of Tomatin and the pursuer's distillery have separate brown tourist signs (albeit

the name Tomatin does not appear on the sign). In order to reach the Site, the Distillery or

the village, a visitor travelling in either direction would have to come off the A9 at the

junction and head west, at which point a T-junction would be reached. The sign at the

T-junction is shown below:

Again, there are separate signs for Tomatin village and the pursuer's Distillery (now named

on the brown tourist sign). A driver who turned left would find another single tourist sign

"Distillery Visitor Centre" shortly thereafter, indicating the entrance to the Distillery. At

present, the traveller coming off the A9 would first pass the entrance to the Site (on the left)

before reaching the entrance to the Distillery about 300 to 400 metres further toward the

village. If the plans to dual this stretch of A9 carriageway proceed, the new on-off ramps

will be located south of the junction, such that a driver coming off the A9 would reach the

Distillery first, and not the Development.

The emergence of single malt whisey as a distinct and premium product

[53]

Historically, and in common with the rest of the producers of Scotch whisky,

throughout most of the twentieth century the vast majority of the Tomatin Distillery's

production was produced for blending or bulk export. It became one of the biggest

producers and exporters of blended whisky by the mid-1970s (having increased the number

of stills from 4 in 1956 to 23 stills in 1974). However, the production of single malt whisky in

its own right, and as a premium product, emerged only in the last 20 to 30 years. Even as

late as 1981, less than 1% of whisky production in the UK was released as a single malt. In

terms of volume of single malt whisky, it now accounts for around 10% of the market by

volume. Those circumstances explain why the creation of a distinctive brand or image is

also a relatively recent phenomenon; there was little need for having or developing a

"brand" awareness for whisky sold for blending.

The pursuer's offering, distribution and marketing activities

The pursuer's offering and distribution within the UK

[54]

Around 90% of the pursuer's whisky product is still exported to international

markets. The remaining 10% of its product is sold in the UK.

[55]

The pursuer's principal outlets in the UK for the purchase of its bottled whisky are

its own Visitor Centre, specialist independent and online retailers (two of whom,

Brian Gibson and Guy Hodcroft, gave evidence), in airside airport retail outlets, and in

restaurants and bars. Apart from being listed (if not necessarily always available) in Tesco

stores in Scotland, the pursuer's products were not sold through any other supermarkets

elsewhere in Scotland or in any other part of the UK. The significance of this is that it was

generally agreed by those witnesses asked about this, that it was via the supermarkets that a

producer generated mass sales or wider brand awareness.

Data relative to the pursuer's position in the global and UK markets

[56]

A number of spreadsheets or other analyses were lodged relative to the pursuer's

position in the UK and global markets (by volume of sales), and analyses to identify the

sources of revenue that contributed to its turnover. This evidence is directed toward issues

such as whether the pursuer has the requisite brand recognition (eg to engage section 10(3)

of the Act) or good will, or the identification of the average consumer of the pursuer's

products and services protected by its Marks.

[57]

None of these spreadsheets was agreed and, indeed, those compiled by the pursuer's

Scott Adamson were challenged on several grounds (eg the omission of a significant

competitor or the inclusion of sales of Tomatin from its Visitor Centre when comparable

figures had not been included for other brands in the table). As there was extensive

reference to these in the evidence, it is convenient to note this evidence as a body at this

point.

[58]

Two of the spreadsheets the pursuer produced showed, respectively, global and UK

sales of single malt whisky broken down by brand for the years 2015 to 2019 ("the global

single malt whisky sales spreadsheet", and "the UK single malt whisky sales spreadsheet",

respectively). The first column of each of these contained the market share for 2019 and the

remaining columns recorded the number of 9 litre cases ("9L"), the standard unit of sale in

the industry, sold in those years. Some of this data was derived from a body known as the

International Wine and Spirits Research ("IWSR"), which collected data on the industry

which it made available to its subscribing members.

The pursuer's spreadsheet of global of single malt whisky sales

[59]

The pursuer's global single malt whisky sales spreadsheet contained 25 entries, listed

in descending order in terms of volume. Tomatin was 25th in 2019, with 0.3% of the market

share of global sales. Its global sales, expressed as the number of 9L cases sold, were as

follows: 37,200 (in 2015), 47,400 (in 2016), 57,000 in 2017), 54,500 (in 2018) and 67,800

(in 2019). The pursuer emphasises the relative growth over those years of 82.4% (only two

brands have a higher % growth over the same years). The top three brands (Glenfiddich,

The Glenlivit and The Macallan) have individual market shares of 13.6%, 11.5% and 8.9%

(or, collectively, 34%) of global single malt whisky sales in 2019. Thereafter the market share

drops to just under 5% (for the next two brands) and continues to decrease. So, for example,

the 12th largest, Lagavulin, has only 1.9% market share and the remaining entries (13th to 24

)

are similarly modest.

The pursuer's UK single malt whisky sales spreadsheet

[60]

The UK single malt whisky sales spreadsheet also records respective market share of

different producers. In 2019 Tomatin ranked 39th in the spreadsheet with 0.3% of UK sales.

The top three single malts (Glenfiddich, Laphroaig and Glenmorangie) had 8.9%, 7.1%

and 6.4% (or, collectively, 22.4%) in the same year. The individual market shares held by

those in the 4th to 9th positions was between 6.3% and 3.5%; the corresponding figures for

those in 10th to 20th positions was 2.6% to 1.2%. In other words, all of the brands ranked from

the 21st position and below each had less than 1% of the market share of single malt whiskies

in the UK. The pursuer recorded its UK sales of 9L cases as follows: 2015 (1,900), 2016

(3,300), 2017 (3,700), 2018 (3,200) and 2019 (3,000). Again, the pursuer emphasised the

relative growth over those years of 56.8% (six brands have a higher % growth over the same

years). The UK market was variously described as "mature" and "fragmented".

Mr Bremner described the UK Scottish market as "crowded" with over 100 different brands,

each of which had several different expressions. He believed that the pursuer "punched

above its weight", given that it was a single unit distilling company and it "did not have a

massive" marketing budget.

[61]

These figures are broadly consistent with the information that the pursuer's

Lorraine Waddell has provided to Alan Gordon of Pagoda Scotland Limited ("Pagoda"),

another whisky industry analyst, in an e-mail dated 27 May 2020. In percentage terms, in

2019 the pursuer exported around 93% of its production of single malt whiskies (or

56,905 9L cases) and it sold the remaining 7% in the UK. Of the latter figure, the Tomatin

single malt contributed 4,498 9L cases, Cu Bocan contributed 576 cases. The remaining

385 9L cases were its blends (Antiquary Deluxe Blend and Big T). Mr Bremner accepted that

these figures supported the position that 90% of the pursuer's product was exported and its

sale of single malts within the UK amounted to only 7% of its sales.

[62]

While the pursuer's Mr Bremner resisted the description of the pursuer as a "small

player" in the UK whisky sector, this was the common view of the other witnesses,

including both experts, who gave evidence on this point. (I address the issue of the pursuer's

reputation below.)

Spreadsheet of global sales of 9L cases of "prestige" and "prestige plus" categories of single

malt whisky

[63]

A spreadsheet of global sales of 9L cases of "prestige" and "prestige plus" categories

of single malt whisky was also produced. The single malt whisky industry divides the sale

of whisky into different categories, based on the price point. The highest band contains

"prestige" and "prestige plus" bottles, categories derived from IWSR. The witnesses'

evidence was not entirely consistent but, broadly, the "prestige" and "prestige plus" were,

respectively, anything above £100 and £200 a bottle.

[64]

On this spreadsheet, which also covered the years 2015 to 2019, Tomatin ranked 6

with combined sales of 9L cases of "prestige" and "prestige plus" categories of single malt

whisky as follows: 2015 (8,700), 2016 (9,200), 2017 (11,200), 2018 (11,000) and 2019 (11,000).

By contrast, the largest three brands (The Macallan, Glenfiddch and Balvenie) each had

shares that were many multiples of Tomatin's. The 2019 figures, for example, record sales

by these three of 9L cases as 128,800, 42,200 and 38,900 respectively.

Breakdown of the pursuer's turnover by source

[65]

The pursuer's total sales may also be analysed in terms of the type of product:

namely, whisky for blending, and the various expressions of single malt whisky. The most

relevant from the perspective of brand awareness and reputation is its range of single malt

whiskies. In 2019, the pursuer exported 56,905 9L cases of single malt (93% of this product)

and sold the remaining 7% (or 4,498 9 litre cases) of single malt whisky product to the

domestic UK market.

[66]

The parties used different sources (audited or management accounts) and produced

different analyses of the pursuer's turnover and the breakdown into categories of product.

The difference in the parties' figures is not material. The pursuer's turnover in 2018 was

around £17.735 million (based on its management accounts). On the pursuer's figures,

spoken to by Mr Bremner, the pursuer's UK sales accounted for 10% of its total turnover,

half of which was generated by the Visitor Centre and which was the pursuer's most

profitable business. In absolute numbers, the sales figures achieved through the Visitor

Centre in 2018 were stated as £1.038 million. The pursuer's non-Visitor Centre UK sales

were stated as £1.38 million.

The Inquiry Report of the Visitor Centre

[67]

The defender instructed an inquiry agent, John McGowan, who visited the Distillery

in October and provided a report ("the Inquiry Report"). His witness statement, including

his adoption of the Inquiry Report, was agreed. He described the Distillery in relation to the

A9 (he took the photos of the signage on and near the A9, reproduced above, at para [52]),

and in relation to the village and the Site. He produced photographs of the signage within

the Distillery and noted that there were no signs indicating the availability of refreshment,

food, beverages or other services not directly concerned with the sale of Tomatin whisky or

souvenir products. Prior to the tour of the Distillery, Mr McGowan was shown a 15 minute

film, shown in a small area he described as being a "small store room converted into a

makeshift theatre", about the natural merits of the surrounding area for whisky distilling.

The tour included a history of the Distillery, a tasting stop at which the pursuer's Cu Bocan

brand was also featured, as well as other blends such as The Antiquary, and an explanation

of the process of distilling and barrelling. It concluded in the bonded warehouse.

Mr McGowan asked the guide if the Distillery hosted functions such as weddings or

corporate events. The guide explained that while some distilleries did that, the pursuer's

"sole concern is the making of whisky" and the only thing the pursuer did was do tours.

After the tour, they were taken to the Visitor Centre. The outside of the Visitor Centre is

shown below:

[68]

Mr McGowan described the Visitor Centre as laid out as a shop, in the shape of the

letter "L", with a counter and till, and a display of bottles of various types of whisky at

various stages of age before bottling. His photograph of the interior was as follows:

There was no till at the bar area where the whisky bottles were displayed. The bar area

appeared to be designed to accommodate the tours which involved more tasting and

sampling. There were no catering facilities or drinks facilities other than the samples of

whisky provided as part of the tour (and during which small miniature bottles were given

away). He described the items offered for sale (see para [x], above) and noted that the only

foodstuffs were souvenir boxes of whisky fudge.

Layout, capacity and facilities at the Visitor Centre

[69]

Several of the pursuer's witnesses spoke to the retail offering at the Visitor Centre ( ie

items falling within Class 35 of the Additional Classes). Photographs were also produced of

branded items offered for sale. While the retail offer appeared to vary over time, it has

included: small ceramic jugs, coasters, miniatures; beanies, rubber bar mats, shoppers,

glassware, wooden keyrings, magnets, pin badges, fudge, whisky-flavoured tea, a

"Highland Glen" candle, as well as a few whisky guide books. There were scarves and

lampshades in the Tomatin tartan, (though the labelling affixed was discrete). The pursuer's

position, which was not challenged at the proof, was that a substantial proportion of those

goods (and its other services at the Visitor Centre) were provided under the Marks. The

defender's challenge was to the relative paucity or low-volume of the branded retail

offering.

[70]

As bar and leisure facilities is another one of the Additional Classes (Class 43), I note

the nature of those facilities at the Visitor Centre. The shop in the Visitor Centre had a small

bar area adjacent to it with space for three or four bar stools. The drinks displayed behind it

were different expressions of Tomatin whisky. There was a separate small self-service coffee

machine. (The defender's inquiry agent Mr McGowan, did not note these at the time of his

visit, but it is likely that this was removed as a consequence of the pandemic (to minimise

contact by the hands of many visitors).) Some other soft drinks and coffee are also offered.

The spreadsheet of these sales for the period from 29 March 2019 to 9 March 2020 disclosed a

total of 61 sales, 45 of which were less than a pound. On a rough estimate, sales of these

types of beverages amounted to less than £100 for that 12 month period.

[71]

The Visitor Centre also offers a video about the Distillery (which parties treated as

falling within education, Class 41). In 2012 a toilet block was added, which enabled the

pursuer to increase the size of the shop and to add a small bar area in the still house where

customers could enjoy a dram. The Visitor Centre had about 34,000 visitors in 2019. A

board presentation of the pursuer, dated 24 April 2018, indicated the pursuer's long-term

aim was to reduce numbers at the Visitor Centre with a view to easing congestion and

improving the quality of the visitor experience. Mr Bremner was one of the pursuer's

witnesses who confirmed this.

[72]

The pursuer regarded the Visitor Centre as the centre of its brand-building exercise.

It is also the only location from which the goods and/or services under the Additional

Classes were offered. From the time of the opening of the Visitor Centre, in 1992, the

pursuer has sold its whiskies and branded point-of-sale items (such as baseball caps and

scarves) there. Over time the pursuer has increased the items to which it has applied its

name and the insignia of hogshead and rampant lions. The pursuer's several witnesses with

marketing experience explained that the insignia were regarded as creating an association of

wealth and prestige.

Analyses of sales from the Visitor Centre

[73]

On Mr Bremner's evidence, the vast majority of sales at the Distillery's Visitor Centre

was Tomatin-branded Scotch whisky. On his evidence, in 2017 and 2018 sales of branded

promotional items totalled £70,000, and dropped to about £50,000 in 2019. Distillery tours

generated £220,000 in 2017, £260,000 in 2018 and £190,000 in 2019.

[74]

The defender produced its own breakdown of the revenue generated at the Visitor

Centre in 2019 (derived from production no 7/51, but not subject to challenge). This brought

out the following:

Whisky sales made up 70.77% of all sales at the Visitor Centre;

Distillery tours made up a further 20.04% of all sales;

Branded goods (other than Scotch whisky) accounted for 5.77% of all sales at

the visitor centre.

Mr Bremner accepted these figures and that the value of non-whisky branded items sold

from the Visitor Centre in 2019 was around £50,000 (or less than £1.50 per person from each

of the 34,000 visitors in that year).

The evidence the pursuer relied on to establish brand reputation of Tomatin

[75]

The pursuer's position is that it uses the Marks in the course of its business and, in

particular, on goods and in advertising, signage, marketing material and internet websites,

including the website at

www.tomatin.com

. It contends that the "TOMATIN" brand is a

household name, recognised throughout the United Kingdom, Europe and internationally

and it has a reputation for excellence and quality. In support of that contention, it relied on

the following evidence:

The pursuer generated a turnover in the UK in respect of single malt whisky

sold under the Marks, including sales made at the Visitor Centre, of approximately

£9 million for the 2018 - 2019 financial year;

The Scotch whisky sold by the pursuer under the Marks has achieved a

significant number of awards and accreditations, including 11 awards at the 2019

San Francisco World Spirits Competition, seven of which were Double Gold awards

and the remaining four were Gold. (A schedule detailing the awards won by

TOMATIN Scotch whisky since 2006 is produced.);

In terms of market share, the pursuer is the 25th largest Single Malt Scotch

Whisky brand globally and the 39th largest Single Malt Scotch Whisky brand in the

UK. In its top five international markets, the pursuer's rank with respect to market

share is 18th in the USA, 7th in Japan, 4th in Israel, 8th in Russia and 15th in Germany.

[76]

By way of illustration of the steps the pursuer takes to increase its brand awareness

and its reach, it was explained that in the last few decades, the pursuer used its Word Mark

in association with its bulk sales of raw spirit to independent bottling companies who, since

the advent of labelling requirements, have also required to put the Tomatin name on the

labels. The online directory (whiskybase.com) detailed 1,088 different expressions of

Tomatin.

[77]

The pursuer also led evidence of other non-traditional means of increasing

awareness and appreciation of its product. This included training and consultancy services

to bartenders and mixologists serving its whisky

. The pursuer also sponsors and runs

pop-up bars at Scottish festivals and UK-wide food and drink industry events. In

association with local events or collaborations, it may release limited edition expressions and

it further promotes these on its social media (photographs of these posts across the pursuer's

Facebook and Twitter pages were produced), by a blog published on the pursuer's website

and the use of social media influencers. It also uses a PR company, which will promote

publicity (eg for the release of a new expression). The pursuer collaborates with chefs and

other food and drink manufacturers in providing tasting menus, gourmet food menus and

events.

It has its own YouTube channel, on which it posts films which have been developed

for educational purposes and are used to train staff and retailers. The pursuer also provides

information on stockists on its website. The pursuer's distributors were described as

playing "a key role" in the promotion of Tomatin as a brand. The pursuer suggested that it

offered financial support to its UK-based distributors, however the only figures provided

(and spoken to by Ms Masson) were all-inclusive of the pursuer's global spending. There

was no breakdown of this figure according to the types of support or markets supported. To

the extent that this was touched on by the retailers, the support involved the provision of

modest souvenir items or a time-limited discount as part of a promotion. It has created an

app which provides users with a virtual tour of the Distillery and guided tastings. The

pursuer shows educational films at the Visitor Centre. It also provides tours of the

Distillery, which are said to educate visitors as to the manufacture, production, sale, history

and consumption of distilled spirits. The pursuer also runs off-site educational events

which provide a similar service without a physical tour of the Distillery.

[78]

At the Visitor Centre the pursuer operates what Mr Bremner described as "a bar and

merchandise retail store", where alcoholic and non-alcoholic beverages, food stuffs, printed

matter (eg calendars) and branded and unbranded merchandise were sold. Visitors did not

have to take part in a tour to access these facilities. On Mr Bremner's evidence, the pursuer

hosted entertainment, conferences and educational events at the Distillery.

[79]

In light of the foregoing, the pursuer asserts that it has a reputation for inter alia the

provision of these goods and services under the Marks and that the 2018 Marks are already

being used in respect of the majority of the goods and services for which they are registered.

In support of the latter contention, the pursuer led evidence of its 2017 and 2018 Marketing

Reviews and the pursuer's 6 month marketing report for the period January to June 2020,

which were said to show extensive use of the 2018 Marks.

[80]

In relation to those classes covered by the 2018 Marks but in respect of which the

pursuer has not yet engaged in any activities or offering (eg restaurant services), the

pursuer's position is that, to the extent that any of the goods or services listed in the

registrations of the 2018 Marks (recorded at para [3], above) are not currently being offered

by the pursuer under those marks, they represent goods or services which would be

considered a natural expansion of the pursuer's commercial undertaking. (The defender

founds on the absence of this offering as part of its case in the counterclaim for invalidation

of the 2018 Marks on the bad faith ground.) The pursuer's position is that it intends to

undertake that expansion within the period of 5 years from the date of completion of the

registration procedure, as permitted by the Act, and that it is common practice for distilleries

to make an initial trade mark filing in class 33 for Scotch whisky and then to make further

filings in Additional Classes as their trade offering expands.

Development proposals for the Site by Braemore Estates and by The Tomatin Trading

Company

[81]

There is an extensive planning history for the Site. The proposals for the Site have

evolved over time. As there was some reference to the design of the buildings in earlier

planning applications and the different names of the trading entity, I should record the

various applications the defender has made. Planning permission was first sought, in the

name of Braemore Estates, in about March 2007 ("the 2007 planning application"). Braemore

Estates lodged a second planning application in June 2012 ("the 2012 planning application").

The third, and most, recent planning application, made in the name of "Tomatin Trading

Company C/O Braemore Estates", was lodged in March 2018 ("the 2018 planning

application"). The name of the proposed Development used at that time was "Juniper

Village", to reflect the meaning of "tomatin" in Gaelic, "hill of the juniper". The

Development has not been commenced. Consent for the Development was granted in late

2018 ("the 2018 planning consent"). While a pagoda element featured in an earlier

application (a pagoda chimney is a common feature of some distilleries), that element was

not included in the 2018 planning application. From about early 2018, Mr Frame began to

promote the Development via the vehicle of the defender, and to style its proposed name as

"the Tomatin Trading Company". (The defender relies on the pursuer's knowledge of the

media coverage it generated in March 2018 as part of its case that the 2018 Marks were

lodged in bad faith, and which it seeks to challenge in the counterclaim.)

The evidence of the parties' experts on the issue of Tomatin as a place

[82]

The most significant chapters the parties' experts spoke to were their researches as to

Tomatin as a geographic or place name, and the reputation of the pursuer's brand in the UK.

It is convenient to record their evidence on these matters, as a body of evidence. Given that

in their evidence on the latter chapter they make frequent reference to the evidence of some

of the witnesses to fact, I will record their evidence on brand reputation after noting the

evidence of the parties' factual witnesses on contested matters. I record below the experts'

evidence on the first matter, before turning to the evidence of the parties on the contested

chapters of evidence. I first note their respective credentials and experience.

Mr MacLean

[83]

The pursuer led Charles MacLean, W.S., M.A., LL.B, a well-known authority on the

history and sensory evaluation of Scotch whisky and author of numerous books on that

subject. He is also a "Master of the Quaich", an accolade accorded by one of the trade bodies

within the Scotch whisky industry.

Mr Russell

[84]

The defender led Iain Russell, who has worked in the whisky industry since 1989. In

that capacity, he has had experience in marketing, intellectual property-related matters, and

as a researcher, archivist and brands heritage manner, principally with Chivas Regal. He is

also a Keeper of the Quaich.

The use of Tomatin as a geographic name: Tomatin Estate, Tomatin village and the

Distillery

[85]

There was a significant amount of evidence about the historical use of "Tomatin" as a

geographical name. Both Mr MacLean and Mr Russell undertook researches, as requested

by their respective instructing agents, into the use of the word Tomatin as a place name.

While both are experts in the qualitative assessment of the attributes of wh isky, the

development and nature of whisky as a product, neither professed to have any

qualifications in history or any special expertise in the history of the part of the Highlands in

which the Distillery and the Site are situated. In large measure, the differences between

Mr MacLean and Mr Russell on this issue were not, truly, matters of expert opinion, but

arose because they used different historical sources: Mr MacLean consulted gazetteers and

clan histories, whereas Mr Russell had reviewed the newspaper archive held by the British

Library (and accessible via the National Library of Scotland's online portal). The principal

difference between Mr MacLean and Mr Russell was their assessment of the nature of

Tomatin village.

[86]

While it was uncontroversial that the Tomatin Estate (dating from the 17th century)

existed before the Distillery (which was founded in 1897) and that it was likely that the

Distillery took its name from the Estate (from whom it had bought the land), the parties

differed as to whether Tomatin village existed before the Distillery. When an earlier source

containing such a reference was put to a witness, the witness generally acknowledged it.

Examples of the earlier sources put, included the following:

The reference to the Freeburn Inn serving as a coaching inn for 150 years (and

which had stood on the Site before the Little Chef had replaced it), from The National,

dated 22 March 2018;

The report from the Inverness Courier, dated 18 May 1854, noting the

opening of a sub-post office at "Tomatin";

The report of 21 July 1900 of the rebuilding of Tomatin Free Church to replace

the building built in the 1840s; and

The reference to the "little village of Tomatin" in an article from the Highland

Journal of 20 November 1896 about the Tomatin viaduct, which had become a feature

in its own right.

Accordingly, I do not repeat all of these materials. I summarise the experts' own researches

of the use of the name "Tomatin" as a place name.

Mr MacLean's evidence on the history of Tomatin as a name and place

[87]

Mr MacLean produced a principal report and a supplementary report responding to

the report of Mr Russell (the defender's expert). In an appendix to his principal report

Mr MacLean listed the 15 published source he consulted. Eight of these are specifically

whisky-related histories, encyclopaedias or handbooks. The other seven are more general

histories, guidebooks, clan histories and gazeteers, of which the most well-known is

Groome's Ordinance Gazeteer of Scotland ("Groome"). (I have omitted most of his specific

references.) He noted the reference to "The lands of Tomatin" in a feu charter dated

December 1639 granted by the Earl of Moray to one "Bean McConnill vic Gillepatrick"

(whom he notes was "the father of the Tomatin branch of the Macbean/MacBain family")

and the subsequent sale of the Estate (sometimes called "the small estate of Free") in 1861 to

the Macbeans of Tomatin at that time. In a reference to the "Inn of Freeburn

, mention had

been made to "post office of Tomatin"'. He noted a further reference (from Groome) to "post

office and general merchant shop within a mile of Tomatin House". From this he concluded

that late 19th century gazetteers make no mention of a "village" at Tomatin and "in all

probability it was a hamlet or `ferm toon'".

[88]

In his supplementary report, Mr MacLean returned to the topic of the history of

Tomatin, and responded to the findings in Mr Russell's report, as follows:

"In support of his conclusions and opinion (paragraph 13.01), Mr. Russell points out

that there was a toll-bar and a sub-post office on the site (paragraph 3.01). Having a

toll-bar and a sub-post office on the main road to the north, named after the estate

upon which they stand, does not imply a `village', nor is it clear where exactly the

toll-bar and sub-post office were located.

Mr Russell also mentions the Freeburn Inn as a staging post and providing

accommodation for travellers (paragraph 3.01). This hostelry was built on Tomatin

Estate, but a quarter of a mile from what became Tomatin village.

At paragraph 3.02, Mr Russell points out that the first mentions of `the village of

Tomatin' appear in the Aberdeen Journal 20

July 1896 and the Elgin Courant 23

July

1897 (cited in Mr Russell's Appendices 7 and 2). These were in connection with

current building work related to the viaduct and railway station. Earlier mentions of

`Tomatin' might be understood to refer to the estate. I note that the Aberdeen Journal

excerpt refers to `the little village of Tomatin'.

In her authoritative historical essay About Strathdearn, Anne Glynne-Percy, the owner

of Tomatin House, writes of Tomatin as being a `parish' and a `community' until the

railway station was built (1896) and named after the estate:

`The railway was the next mode of transport to the Highlands and the

Strathdearn link from Aviemore to Inverness was completed in 1896... When

the station was built the railway company needed a name for it so, the

proprietor of the most disrupted estate was asked if it could be known as

`Tomatin', to which Mr MacBean readily agreed'.

Before the distillery was built the name `Tomatin' will have been known only locally,

and to a few sporting tenants on the Tomatin Estate.

I accept Mr Russell's remark at paragraph 3.04 that the description of Tomatin as a

`community' or a village might be merely `semantic', but the point is that the

community/village grew up on account of the distillery and is synonymous with it.

In fact the village was largely built by the distillery to provide houses for its

workforce, and still today it owns thirty cottages which are let to members of staff.

At paragraph 3.02, Mr Russell cites an article in the Banffshire Herald (1894) and

claims that Tomatin was "a popular destination for excursions from Inverness". My

contention is that the `popular destination' is more likely to be the estate rather than

the village. I would also contend that basing the claim on a single `excursion' does

not imply popularity: Mrs Glynne-Percy makes no mention of such `excursions'

although she does stress the importance of the place for shooting parties:

'Before the war I remember the excitement at Tomatin Station in August

when the `sleeper' train stopped, and passengers descended, guns and

accoutrements, staff, then dogs from the guard's van, to be met by transport

called `shooting brakes' to convey their parties to the various lodges up the

glen where all awaited their comfort, warmth and Highland hospitality...

Industry came to Tomatin in 1897 with the building of the Distillery... [for

which] the railway was also a boon, with a short spur going from the station

to the distillery. Houses were built to accommodate employees, mostly local

men and their families, which was a welcome opportunity for steady work, as

sport was only seasonal'.

In its Strathdearn Community Planning Study 2011, the CADISPA Trust [Conservation

and Development in Sparsely Populated Areas] explored, inter alia, `ways to establish

Tomatin and Moy as tourist `destinations' in their own right', clearly implying that

they are not currently seen as such. This report was sent to me by my instructing

solicitors and is lodged as production 7/43 (see p.29 item 28)."

From this he concluded, slightly more categorically than in his first report, that:

"the `village' of Tomatin was little more in the than a hamlet in the late 19th century.

Some buildings were erected on the arrival of the railway (1896) and more were built

by the distillery to house its workforce (1897). To this day the majority of the

workforce live locally, in cottages owned by the distillery. Both the railway station

and the distillery took their name from Tomatin estate, on which they were built

not from a village, which did not exist at the time. It was owing to these

developments that the village came about." (Emphasis added.)

[89]

The cross-examination of Mr MacLean, insofar as relevant to this topic, elicited the

following evidence:

In relation to "Tomatin" as a place name, he remained of the view that it was

not a place name among the general public. However, under reference to the

2019 Transport Scotland Report providing traffic flows (that between May and

September more than 11,000 people a day pass the Tomatin junction), he accepted

that Tomatin was pictured on the map in that report and that most of those who

passed on the A9 (and whom he accepted were not single malt whisky consumers)

would associate "Tomatin" with a place, specifically the junction, and not with the

Tomatin Distillery. The majority of those passing would associate "Tomatin" with a

place;

He also accepted that some of the newspaper reports of March 2018 about the

Development contained repeated references to the Tomatin junction and some also

referred to Tomatin village. None had referred to or named the Distillery. He also

accepted that it was reasonable for the Development to use "Tomatin" in its name, as

a way to identify that it is located at the Tomatin junction;

When some of the press cuttings appended to Mr Russell's report pre-dating

the founding of the Distillery and referring to a "Tomatin village" were put to him,

he accepted that there were references to a Tomatin village.

Mr Russell's evidence on the history of Tomatin as a name and place

[90]

On the issue of whether Tomatin was an established place name before the Tomatin

Distillery was founded, Mr Russell recorded the fruits of his own research, as follows:

"3.01 According to the whisky writer Tom Bruce-Gardyne, Tomatin `has always

been a staging post on the main north road, if not always with a gift shop and car

park.' (Charles MacLean (Editor-in-Chief), Whisky (Dorling Kindersley, London,

2008), p97).

This road, from Inverness to Perth, provided the main line of communication

between the Scottish Highlands and the Lowlands. There was a toll bar at Tomatin,

mentioned in 19th century newspaper notices (eg: Inverness Courier, 25 April 1838)

along with toll bars at other places along the route including Carrbridge, Aviemore,

Newtonmore and Dalwhinnie. Tomatin would have been well-known to travellers

who had to stop to pay a toll fee there, in order to use the road.

The Freeburn Inn (later known as the Freeburn Hotel) at Tomatin was a `stopping

place for changing horses in the old coaching days (Elgin Courant 23 July 1897). It

also provided accommodation for travellers wishing to break their journey at

Tomatin, to stay overnight or for refreshment. Latterly, it became the headquarters

of the Cyclist's Touring Club. It remained a well-known landmark in the area until it

closed in the 1960s. (see the entry on Historic Environment Scotland's Canmore site,

https://canmore.org.uk/site/100469/tomatin-freeburn-hotel

)

3.02

Charles MacLean says in his report (4.02) that, in the late 19th century,

Tomatin was `in all probability... a hamlet or a `ferm toon.'. In fact Tomatin was a

well-known staging post on the great north road with its own post office and

telegraph office. It was also the social centre of the local community. New Year

gatherings were held there for the people of Strathdearn, where there were shinty

matches and other forms of sport and entertainment hosted by the local laird, who

lived at Tomatin House (Inverness Courier 18 January 1855 and subsequently).

A sub-post office opened at Tomatin in 1854 (Inverness Courier, 18 May 1854) `under

the care of Mr John Macdougall, merchant'. There are many references in later years

in local newspapers to the post office and a mail service at Tomatin. The presence of

a post office, with its shop and money office, indicates the importance of the place to

the local community in Strathdearn. (see photographs on-line at

https://her.highland.gov.uk/Monument/MHG21692

)

In addition, villagers could worship at the Tomatin Free Church, erected after the

Disruption in the 1840s and rebuilt in 1900. Again, the presence of a church is an

indication of Tomatin's significance in the local area. (Highland News, 21 July 1900,

see also 19th century postal directories)

The area was already known for its natural beauty and a newspaper report suggests

Tomatin was a popular destination for excursions from Inverness (Banffshire Herald

21 July 1894)

The Aviemore & Inverness Railway opened in 1897. It may be significant that the

Aberdeen Journal, in its article about the building of the line on 20 November 1896, did

not mention a distillery in its reference to the benefits that the new railway would

bring to `the village of Tomatin.' (It did however mention the possibility that

housebuilding and tourism would be encouraged by the opening of the station. (I

note the use of the term `the village of Tomatin' by a Scottish newspaper in the late

19th century: this provides an alternative view to that of Charles MacLean, in his

Report (4.02), that `late 19th century gazetteers make no mention of a `village' at

Tomatin and in all probability it was a hamlet or a `ferm toon').

3.03

After the opening of the distillery, Tomatin continued to feature in

newspaper reports unrelated to whisky. A report on the development of facilities

aimed at transforming Tomatin to a summer holiday resort appeared in the press in

1903 (Northern Chronicle, 4 March 1903), decades before the development of a resort

at nearby Aviemore.

Indeed, the Northern Chronicle, in an article about proposals to build a golf course

there, described Tomatin on 19 October 1904 as `this popular summer resort.' The

story of the Tomatin Golf Club is told here:

https://www.forgottengreens.com/forgotten-greens/invernesshire-ardersier/tomatin/

3.04

Charles MacLean refers in his Expert Report (4.04) to a Dutch cataloguer of an

Italian whisky collection who has described Tomatin as a `community', when

cataloguing old Italian bottles of Tomatin. I believe this to be a case of semantics

Tomatin is a place and the location of homes and businesses, whether one prefers to

call it a village or a community.

However, it seems that at least one senior executive at Tomatin in the 1980s preferred

to call it a village: John Buchanan, Norman Case and Emery Gellert wrote in their

book Scotch Whisky: The Single Malts (Sydney, 1981), p138, that the distillery was

established `in 1897 near the village of Tomatin'. According to their

acknowledgements, p2, the information came from Peter Wright of Tomatin

Distillers Company Ltd (TDC), who supplied information for the book. Mr Wright

was managing director of TDC.

3.05

I believe that Tomatin's reputation as a stopping place for travellers on the

A9 continued in recent years, with the opening of a Little Chef and filling station

in the 1980s. It closed in or about 2004.

I have examined the evidence supplied by the Private Investigator (7_5) and note the

photographs of the Tomatin Country Inn (2010), Tomatin Country Store (2009), and

the Tomatin Village Store (2011 and 2015). I note also that in December 2020 there is

a website for the Tomatin Village Shop (

https://thestrathdearn.org/local-info/tomatin-

village-shop/)

." (Emphasis in bold added.)

From all of this he concluded:

"Tomatin is a village in the Highlands of Scotland, with a long history as a focus of

the local community, a staging post on the road between Inverness and Perth, a

communications centre and a place of retail and service businesses, all of which

pre-date the construction of the Tomatin Distillery."

And in relation to the Tomatin Distillery, he concluded:

"The Tomatin Distillery was named for the place in which it was built, by

businessmen who included a Tomatin-based merchant."

[91]

In respect of the history of Tomatin Distillery, Mr Russell disagreed with the

assertion "that it was customary for places to be named after whisky distilleries" and he

provided a host of examples where the distilleries were in fact named after the place where

they were situated. His researches into the history of the Tomatin Distillery disclosed the

following:

"4.03 When the Tomatin Spey District Distillery Company Ltd was registered in

1897, one of the shareholders was listed as John MacDougall, a merchant of Tomatin

(Highland News, 12 June 1897). MacDougall's obituary mentions that he was the son

of the Tomatin schoolmaster, began in business at the age of 17 in Tomatin, and

developed a business as a `general merchant' that was `second to none in the

Highlands'. (Northern Chronicle, 1 December 1909).

The invitation for tenders for the work involved in building the distillery was

published in 1897. It made clear that the distillery was to be built `near' Tomatin,

indicating that the place would have been recognised by local tradesmen.

Tradesmen who wished to view the plans and specifications of the distillery were

directed to John MacDougall of Tomatin. (Inverness Courier, 23 April 1897).

This well-known Tomatin businessman played an important role in the

establishment of the distillery." (Emphasis added.)

[92]

One of the pursuer's witnesses, Scott Adamson, who is a graduate in Scottish History

from the University of the Highlands and Islands, had stated that the Distillery pre-dated

the village. However, under reference to a number of sources (noted above) containing

references to the village of Tomatin, its post office and the Free Church, he accepted that his

conclusion had been based on limited sources, and was wrong.

The history of Tomatin as a name and place: conclusion on the evidence

[93]

While this issue was dealt with extensively in Mr MacLean and Mr Russell's reports,

their principal differences may be explained by their resort to different types of historical

materials. Mr MacLean confined himself largely to secondary guides, whereas Mr Russell

undertook a search of a database of contemporaneous materials in the form of the British

Library's digitised newspaper archive. In light of those materials, it is undoubtedly the case

that Tomatin village existed before the Distillery was founded, and was referred to on

occasion as a village. The existence of a post-office and Church are also strong indicia of a

settlement which was more than a "`ferm toon' or hamlet", as Mr MacLean contended.

[94]

Mr MacLean's occasional categorical assertions that the Distillery preceded the

village was a matter he inferred from the absence of any reference in the materials he relied

on, but was made without consideration of the kinds of materials Mr Russell had reviewed.

His assertion that the Distillery built the village was an overstatement and inconsistent with

the documentary evidence that the village preceded the founding of the Distillery. When

the materials evidencing an earlier usage of Tomatin as a place name for the village were put

to Mr MacLean, he accepted them.

[95]

It is for these reasons that, on this matter, I prefer the evidence of Mr Russell, and his

conclusion that Tomatin village was a place in its own right for years before the Distillery

was founded. The fact that one of its founders had been described as a "merchant of

Tomatin" reinforces the historical priority of Tomatin village, and is at least suggestive that

the Distillery's name was taken from the village or the Estate (the area is known as

Strathdearn). While it is no doubt the case that the village grew as a consequence of the

creation of the Distillery and its provision of housing for its workers, the defender has

established that Tomatin pre-dates the founding of the Distillery as a geographical place-

name and that the village existed, and was identified as Tomatin village, before the

Distillery was established. I reject the pursuer's proposition that the Distillery gave its name

to the village.

[96]

In any event, while the parties focused on the question of the priority historically of

the village relative to the Distillery, in my view this is of secondary importance, if, since that

time, Tomatin has become known generally to members of the public as a place or places

(the village or the junction, or both). It is for that reason also that I prefer the evidence of

Mr Russell. He alone addressed the pertinent issue of the awareness of Tomatin as a place

in modern times, in particular by reason of it as a convenient stopping place on the A9 and

the presence of travellers' services in the form of a fast food restaurant and petrol station

(until those closed). It was not the primary usage of Mr MacLean or Mr Russell, but it was

noticeable at the proof that the witnesses familiar with the area readily referred to the

junction as "Tomatin" junction, which is indicative that it is a discrete place known by that

description. In cross-examination, Mr MacLean accepted this under reference to the STS

traffic figures. On the STS road traffic data from 2019, an average of nearly 11,000 drivers

travelling on the A9 passed the junction every day (the figure was higher for the summer

months and lower at other times of the year; by contrast, the Distillery attracted

34,000 visitors in a year. (That is, of course, a separate matter from the reputation or

goodwill in the pursuer's use of Tomatin in association with its products, but I am here

considering the issue of Tomatin as a geographic designation.)

The parties' Notes of Objections

[97]

As is clear from the parties' respective Notes of Objections, many of the witnesses to

fact purported to express a view on matters which were more properly matters of opinion

evidence or purported to state a conclusion on matters that were properly for the court to

determine. I have upheld the objections quoad these matters. In any event, even had I not

excluded this evidence, I would have accorded it very little weight as, generally, it was

partisan in nature or spoken to by a witness who lacked a credible or cogent basis for the

view or conclusion stated.

[98]

As I have just recorded the evidence of the experts on the question of brand

reputation, it is convenient next to record the evidence of the two retailers led by the

pursuers.

The pursuer's proof

The evidence from the retailers

[99]

The pursuer led the evidence of two retailers: Brian Gibson, a specialist wine and

spirits retailer trading from a physical store in Dumfries, and Guy Hodcroft, a buyer for the

online drinks retailer, Master of Malt.

Brian Gibson

[100]

Brian Gibson is the joint managing director of T.B. Watson Limited ("TBW"), a

specialist wine and spirits retailer in Dumfries since the 1950s. Mr Gibson is also a Keeper of

the Quaich. Mr Gibson has worked with TBW since 1982. He stated that its customer reach

was world-wide, although it sold most of its products in the UK, and its biggest group of

customers was from its own locality.

[101]

TBW stock over 400 different types of whiskies. In addition to retailing, it also runs a

club, called Drambusters, offering whisky tastings every 6 to 8 weeks. This club has been

running for 20 years and currently has 271 members. While there are now virtual tastings

online, it had had members who travelled up from the North of England. TBW have also

organised an annual whisky festival in Dumfries since 2010 and to which they invite

about 45 suppliers, 40 of whom are whisky suppliers, to sell and promote their products.

About 830 to 840 people attended when this was last held, pre-pandemic, in 2019. The

pursuer has offered a raffle prize and free samples at the festival. He had visited the

Distillery and taken a tour about 5 or 6 years ago, as part of the same raffle prize. He

described the pursuer's staff as extremely supportive of these events. The pursuer's brand

ambassador, Scott Adamson, had also given talks on the Tomatin single malt whisky range

at TBW's "Drambuster" club. He was aware of the pursuer's Visitor Centre, noting that one

of his own staff had purchased a Tomatin-branded polo shirt, whose quality Mr Gibson's

wife had admired.

[102]

The range of the pursuer's products TBW sells includes 12 types of the Tomatin

Highland Malt Scotch Whisky, as well as three different types of the Distillery's "Cu Bocan"

malt whisky range and two of its blended products, sold under the names "Big T" and "the

Antiquary". He described the pursuer's Tomatin single malt whisky range as its second

best-selling range, with a loyal following amongst his customers. He described the range as

offering a single malt whisky for every budget: its entry-level malt retailed for £32 a bottle

(which they discount, with the pursuer's consent, to £23). At the other end of the spectrum

was a bottle of 43 year old Tomatin single malt whisky from 1975 for sale at £2,400. He

believed that for that reason the Tomatin single malt whiskies attracted quite a large range

of customers. He understood that it was by the pursuer's choice that its products were not

generally found for sale in supermarkets and therefore it was:

"most likely to be purchased by those who are interested in whisky and who either

buy it on line or in specialist shops such as ours in Dumfries, where staff can talk

knowledgeably to a customer, or who is maybe wanting to try something new."

The brand also attracted "serious whisky collectors" looking to buy whisky as an

investment. It was that type of customer who would buy a 43-year old Tomatin single malt

whisky.

[103]

Mr Gibson is clearly an ardent fan of the Tomatin single malt whisky range. A

14-year old Tomatin single malt whisky would be his "Desert Island" pick. To celebrate the

length of TBW's existence he chose a cask from the Tomatin range, which he had bottled.

He was aware of the rebranding exercise the pursuer undertook a few years ago, and

described it as making the product look more luxurious and eye-catching. He was also

aware of the use of the 2018 Marks over the last two years. He associated the name

"Tomatin" with good quality malt whisky as, he believed, would any reputable whisky

merchant or whisky trade.

[104]

In his supplementary statement, he rejected the proposition that Tomatin was not

well-known in the UK single malt whisky sector. This was a fragmented sector. In relation

to international awards, producers who won such awards, which included the pursuer, used

these to market their products in the UK. He was aware that the IWSR gave out stickers and

consumers understood that these were badges of excellence.

[105]

In cross-examination, Mr Gibson readily accepted the following:

TBW was a specialist spirit retailer and that he was very passionate about

single malt whisky generally, and about the Tomatin single malt whiskies in

particular;

Those who join TBWs whisky club were connoisseurs (albeit there were

members of the younger generation keen to learn) and the general public wishing to

purchase Scotch whisky did not join clubs (such as Drambusters);

Tomatin is known to single malt whisky aficionados; they are the key

customers of the pursuer's brands and the consumers Tomatin has traditionally

targeted;

Tomatin was not heavily promoted in the UK market in comparison with

brands like Bells. The bigger brands had bigger advertising budgets. This also

affected customer recognition, as the better promoted brands would be better

known. The bigger brands had got where they were, and huge in the market,

because of huge marketing spend over a very long time;

It was absurd to characterise Tomatin as a leading single malt whisky in the

UK. In his view, the single malt whisky market was huge;

Tomatin was a niche brand known to connoisseurs. Mr Gibson thought it

would be well known to established drinkers, rather than those just starting out;

He was more familiar with the UK market and, under reference to the

relevant figures (that Tomatin single malt whiskies had 0.3% of the market; was

ranked 39th in that market and in 2019 had sold a total of some 3,000 9L cases) He

accepted that sales were a fair reflection of brand recognition by customers and that

those at the top of the list (namely, Glenfiddich, Laphroaig and Glenmorangie, who

had a collective market share of 24%) were better known. In his view, these

distilleries had more stills and produced much more in volume, enabling them to sell

more product through supermarkets. Products that sold more and through a mass

retailer, like a supermarket, were better recognised by the general public. Mr Gibson

contrasted that with TBW where customers came looking for something different

and for guidance. He acknowledged that he was a huge fan of Tomatin and that

could explain why it was such a best seller at his shop; and

He accepted as "fair" Charles MacLean's description of Tomatin as "a

relatively small player" in the single malt whisky market, and Mr Russell's

observation that Tomatin was "far from being one of the well-known brands of

single malt whisky". He also acknowledged that the single malt whisky segment

was a very small element of the Scotch whisky market, which included blended

whiskies and which took up most of the market share.

Guy Hodcroft

[106]

Guy Hodcroft, a graduate in History and Spanish, has been a buyer for the online

drinks retailer, Master of Malt for 4 years. Prior to that he had worked at Selfridge's in-store

wine shop in Manchester, on and off as a student, and with another wine and spirits retailer.

Master of Malt sold a variety of alcoholic beverages, but it predominantly sold malt whisky.

[107]

Mr Hodcroft described coming from a Scottish family in Aberdeenshire. His

paternal relations enjoyed malt whisky, and a Tomatin single malt whisky was one of the

brands they drank. He was also aware of the Tomatin brand from his time at Selfridges. It

had not "leapt off the shelf" at Selfridges. Rather, customers were enticed by Selfridge's

reputation and cachet and for that reason assumed that "it must be good". That kind of

customer bought the pursuer's entry-level brand, "Tomatin Legacy". Selfridges had a

sizeable international customer base looking for Scotch malt whiskies.

[108]

In terms of Master of Malt, it stocked all of the Highland single malt whisky in the

Tomatin range. There had been year-on-year increases in sales of Tomatin single malt

whisky. In comparison with the prior year, the increase in sales had been 15% in 2015, 25%

in 2016, 20% in 2017 and 25% in 2018. 2019 had not been typical because of licensing issues

in the US. The increase in 2020 (over 2019) was 45%, though he attributed some of this to the

general shift to online sales caused by the pandemic.

[109]

He was aware of the refresh of the Tomatin brand in 2014, which he believed

contributed significantly to its growth. The bottle size and shape had changed; now it was

curvier and had an indentation bearing the Tomatin hogshead motif. Each expression had a

different colour and the age was printed on the label and on the foil. He described the brand

refresh as coinciding with the period when the pursuer wished to make "more of a noise"

about the Tomatin brand. He recalled from a publication aimed at the US market, "Whisky

Advocate" that Tomatin had taken out advertising to promote the new livery.

[110]

In terms of brand awareness, in his view, while Tomatin single malt whisky "might

not be massively well known to the general public", anyone who knew a little bit about malt

whisky was likely to have heard of it. Within the whisky community, which he described as

"the whisky industry and whisky connoisseurs", it had a very good reputation. He noted

that there was always a great interest in any new expression of a Tomatin single malt

whisky. These generally sold out. He regarded that factor, together with how quickly it

might sell out, as two good indicators of how well received a product was. Master of Malt

might engage in promotions, including for Tomatin. These would be coupled with

discounts, which would be posted to Master of Malt's Facebook, Twitter and Instagram

accounts, and circulated the 100,000 customers who subscribed to their email.

[111]

Mr Hodcroft described other means used for the promotion of Tomatin. These

included giveaways of free samples, and a competition (the prize for which was a tour at the

Distillery). The pursuer usually took a stand at the annual whisky show in London. Insofar

as he was aware of other Tomatin-branded products, he had been sent a Tomatin whisky

glass in 2015. He had not visited the Distillery in person. (He could only guess, not know,

the kinds of items it might sell.) He offered the view that it was not uncommon for Scottish

distilleries to bear the name of the village situated near to them; and that often no-one will

have heard of the village in question but for the fact that there was a distillery there. This

was the case for him, in respect of Tomatin village.

[112]

In his supplementary statement he responded to comments made in statements from

Mr Frame and Simon Bath (to the effect that with a market share in the UK of only 0.3%,

Tomatin did not have a reputation in the UK). In his view, market share and reputation

could not be correlated in this way, as bulk sales do not always correspond to quality. In

any event, in his experience, distilleries producing single malt whiskies focused their efforts

on the international market. He referenced the figures from the Scottish Whisky Association

("SWA") that the international blended and malt market was worth £4.9 billion in 2018. The

UK market was £2.3 billion in the same year, of which single malt whisky comprised

£398.86 million. He regarded the UK market for single malt whisky to be mature and

fragmented. While Tomatin's market share was only 0.3%, this did not mean that Tomatin

did not focus on its UK market as well as its international one.

[113]

In Mr Hodcroft's cross-examination, which was brief, he accepted that he knew

whisky better than the average consumer, and that the typical customer who bought

through Master of Malt was more of a connoisseur and more knowledgeable about whisky

than the general public. He understood that traditionally the pursuer's marketing strategy

was to use specialist retailers, such as Master of Malt. He accepted as accurate

Charles MacLean's observation that Tomatin single malt whisky was known to whisky

"aficionados" and that they were the "key consumers" of the brand. This reflected his own

retail experience of the Tomatin range. In Mr Hodcroft's view, Tomatin had a very loyal

following and also attracted drinkers with more catholic tastes who wanted to explore

quality single malt whiskies from Scotland and around the world. He also accepted that

Tomatin single malt whiskies were not as heavily promoted as the leading brands, such as

Glenfiddich, and that they really did not stand in the same category as those brands, because

they were not advertised or promoted in the same way. He also accepted that the market in

Scotch whisky was divided into many different segments (including blended, single grain,

blended grain and so on). Within the Scottish market for malt whisky, the sale of single malt

whiskies was relatively small in terms of volume of sales, but not in terms of value. Tomatin

was not a major brand in the Scottish whisky market; it was not like Johnny Walker.

Tomatin was not as heavily marketed as the market leaders (such as Glenlivit) or near such

brands in terms of brand awareness. Brand awareness was hard to define. Tomatin was

certainly not as heavily promoted as other brands.

[114]

The global and UK sales of single malt whisky spreadsheets were put to him (see

paras [59]ff, above). In relation to Tomatin's rankings in the global market, the brands

sitting at the top half of the table were much bigger in terms of production capacity,

marketing spend and popularity. In relation to UK sales, he accepted that generally the

percentages reflected the brand awareness (but not necessarily quality). Generally, the

higher ranked brands were better known brands among whisky drinkers. When

Mr Russell's proposition was put to him, that Tomatin was "far from being" one of the well-

known brands, Mr Hodcroft resisted this. This was not necessarily the case. It was

relatively well known and was well known to those who had more than a passing interest.

It was the single malt whisky aficionado who knew Tomatin single malt whisky well. He

accepted that, if Tomatin was placed within the wider malt whisky market (ie not confined

to single malt whiskies) then it was "absurd" to call Tomatin a market leader, and that this

was true, whether considered from the perspective of sales or brand recognition.

The pursuer's brand and marketing strategy

[115]

The pursuer led its Head of Brand for the Tomatin single malt whisky,

Jennifer Masson, and its Global Brand Ambassador, Scott Adamson to speak to the pursuer's

brand and marketing strategies. While the pursuer's managing director, Stephen Bremner

also spoke to these matters, his evidence was based on these two witnesses and did not

contribute anything new.

Scott Adamson

[116]

Scott Adamson had been the pursuer's "Global Brand Ambassador" since 2018. He

had previously worked for the pursuer as a regional sales manager from 2013 to 2017 and as

an intern while still at university in 2012. He graduated in 2013 with a degree in Scottish

History from the University of the Highlands and Islands.

[117]

From about 2012 onwards the pursuer began to create a "brand story". This is

because it is perceived to be the case that the modern consumer looks for "authenticity" in

purchasing these kinds of goods. The brand refresh in 2016 involved both a redesign of the

packaging but also a focus on the Distillery's "story" and "community". The researches

Mr Adamson had undertaken in around 2012 as an intern to help build the Tomatin story

included the history of the surrounding area, the Distillery and how it had expanded and

evolved over time. By reason of its remote location the Distillery had built housing for its

workforce to rent. The pursuer continues to own 30 of these which it rents to its workers.

Mr Adamson regarded this as unique and a feature of its history to emphasise when

devising and marketing the Tomatin brand's story.

[118]

He described the qualities of the pursuer's brands (which includes "Cu Bocan") and

blends (marketed as "Big T", "the Antiquary", the Talisman, Glenlassie, Grand Alastair, and

the Legendary Scot), but his focus was on the Tomatin single malt whiskies. The various

single malt whiskies that Tomatin produces included unaged labels (such as Tomatin

Legacy and Tomatin cask strength), aged labels (12, 14, 18, 30 and 36-year old single malt

whiskies), some limited expressions and five Tomatin single malt whiskies exclusive to the

global travel market (ie airports). He also described the instances from the Distillery's

records of when "Tomatin" was used, eg on bottles or newspaper advertisements. Scottish

distilleries only began to produce single malt whisky from around the 1990s although the

Distillery had produced an aged single malt whisky in the 1950s and it remained the case

that 90% of the output of Scottish distilleries was blended Scotch. He also referred to five

Tomatin single malt whiskies dating from the 1950s and 1960s held in the collection of a

Valentin Zagatti, all of which featured the "Tomatin" name. Other bottles he had found,

dating from 1986, contained the lion rampant and crested hogs head. He believed these

emblems were used from that time by the then-new Japanese owners of the Distillery.

[119]

He described the Tomatin brand as attractive because of its "whole brand

messaging" and its ability to convey "authenticity and provenance", which consumers of

premium spirits look for. In his presentations, he emphasises Tomatin as the name of the

Distillery, not as a place. He explained how the Tomatin brand was promoted. He is the

pursuer's first "brand ambassador". He promoted the pursuer's products by sharing its

brand and history across the distribution chain, from distribution partners to retailers and

consumers. The pursuer also used masterclasses and tastings to promote the brand directly

to the consumer. Between 2015 and 2019 the pursuer had also attended 130 or so one-day

events, ranging from trade shows and festivals (eg the Edinburgh Festival, the Whisky

Festival in Dumfries, Cadenhead's in London), staff training at hotels or presentations at

individual retailers. He described these as a combination of consumer tasting and education

featuring Tomatin single malt whiskies and branded items such as banners, glassware and

pin badges. He also referred to the different tours one could undertake at the Visitor Centre.

[120]

He spoke to the pursuer's spreadsheets of global and UK sales of single malt whisky

(see above, at paras [59]ff), which he had prepared using data from the IWSR. He had not

included all 162 brands in the spreadsheet of global sales, as he had wanted to showcase

Tomatin. He did not regard Tomatin as a small player (because having only 0.3% of the

global market), because it was in the upper quartile of the 162 producers. In relation to the

spreadsheet of UK sales, he explained that the pursuer's goal in the next 10 years was to be

in the top 10 of single malt whisky brands. There were 83 producers of single malt whisky

in the UK, and the pursuer was ranked 39th by sales (measured by volume). Mr Adamson

stressed the relatively high percentage growth the Tomatin single malt whisky brand had

achieved since 2015. This was necessarily a longer term ambition because the Distillery had

to build up the aged stock before they could access mass market outlets such as

supermarkets or wider distributors. For that reason its distribution channels had been

confined to specialist retailers. It had now accumulated enough stock to make a run at

reaching a wider retail market. Some of the Tomatin single malt whiskies were available at

some Tesco stores in Scotland.

[121]

The principal topic of cross-examination of Mr Adamson was his evidence about the

market position of the Tomatin brands.

[122]

In relation to Tomatin's position in the global and UK markets, he confirmed that the

pursuer's sales of blended whisky accounted for 90% of its sales and that this was by value,

not volume. He accepted that the single malt whisky sector was a small segment of the

Scotch whisky market and that it was "fair comment" to describe the pursuer's focus as

being on its international market for single malt whisky. Under reference to figures from

Pagoda, (see para [61], above), Mr Adamson accepted that in 2019 the pursuer sold 4,400 9L

cases of single malt whisky in the UK and exported 56,900 9L cases, or 93% of its single malt

whisky sales by volume. Under reference to the pursuer's spreadsheets of UK and global

sales of single malt whisky, and the pursuer's position as 25th with a 0.3% market share,

Mr Adamson accepted that the pursuer "had a long way to go" before it could be counted as

"a leading single malt whisky brand in the UK". He accepted that other brands had

invested huge amounts in marketing and in promoting their brands in other ways over a

long period to achieve their standings.

[123]

Mr Russell's observation, to the effect that Tomatin was "far away from being well-

known", was put to him. Mr Adamson referred to Tomatin having a good reputation but of

not being able to distribute widely via supermarkets. He accepted that he was talking about

the knowledge of specialist retailers and that the difference in consumer numbers between

the market leaders arose because those brands were selling through mass distributors such

as supermarkets. Mr Adamson also accepted as true what both experts had stated, that

Tomatin was a "relatively small player in the UK and export market". He accepted that

assessed by volume of sales, Tomatin was a relatively small player in the UK single malt

whisky market. He also accepted that (as Mr MacLean had stated) it was "absurd" to

compare Tomatin with the single malt whisky brand leaders in the UK. He also accepted

that it was absurd to compare the market in single malt whisky with blended whiskies.

They were two very different markets.

[124]

In relation to the typical consumer, Mr Adamson also accepted that to the drinking

general public, it was the blended brands that were by far much better known than single

malt whisky brands. The general public who buy Scotch whisky on the whole do not buy

single malt whiskies, which comprise only 10% of the market. He also accepted that in

terms of brand recognition, it was fair to say that the Tomatin brand had not reached the

general public buying single malt whisky.

[125]

In relation to other tables he had prepared, the table he had compiled showing

Tomatin ranked 6th (see para [63] above) was in the UK market for the prestige plus

banding of single malt whiskies. By contrast, a table of both prestige and prestige plus

bottles in the UK by volume showed Tomatin ranked 13

. He also accepted that in relation

to that document, he had added in sales from the Visitor Centre but had not done an

equivalent adjustment for any of the other entries.

Jennifer Masson

[126]

Jennifer Masson has had a career in marketing since she graduated in 2007. She has

been "Head of Brand" for the pursuer since 2012 and is also responsible for strategic

development of the Tomatin single malt whisky brand. She explained that the pursuer's

core brands were Tomatin single malt whisky, Cu Bocan (another single malt whisky) and

the Antiquary (a blend). The name Tomatin was used to identify its single malt whiskies,

and had been used since at least 1958. She had been on maternity leave when the

2018 Marks had been registered.

[127]

She spoke to an undated leaflet (which she surmised came from the mid-1980s)

promoting Tomatin and the Big T where the hogshead, a Highland symbol of hospitality,

and a heraldic lion were used, and to similar undated images. She explained that heraldic

imagery was important to single malt whisky branding, as it conveyed Scottish history and

tradition. These had been incorporated into the 2018 Figurative Mark. In 2014 the pursuer

had decided to update the Tomatin single malt whisky brand as part of its brand positioning

strategy and to introduce a communications strategy. This led to a "softening" of the image

of the Tomatin brand (to emphasise that Tomatin single malt whisky is produced from softer

water), the adoption of a new bottle shape, the alteration of the typeface used for "Tomatin"

and the stress on the quality of the single malt whisky brand. All of this was to modernise

the brand. The refreshed branding was rolled out in 2016. The 2018 Marks have been used

in the pursuer's social media page, press releases, email sign offs, on its website and at

events it has attended.

[128]

She described the "exponential" growth of the Tomatin single malt whisky brand

since 2012; that it was exported to 50 markets globally and its relative ranking in various

markets (the rates of growth are noted at paras [59] and [60]). The pursuer's emphasis has

been on the value of sales, not volume. While the pursuer still sells its entry-level single

malt whisky (Tomatin "Legacy"), the pursuer's focus is on the higher priced prestige

offerings (priced at £75 and above). It has therefore focused on selling to specialist

independent retailers, rather than selling in bulk to supermarkets to drive up volume sales.

Tomatin single malt whisky is only listed in some Tesco stores in Scotland. Since the

rebranding, there had been significant growth in sales of most of the pursuer's core

products: its 12 and 30 year old single malt whiskies had grown 60% and 97%, respectively.

[129]

In relation to expenditure on advertising, marketing and promotion, she spoke to

spreadsheets showing such spending for each of 2010 to 2019 and which showed a doubling

of expenditure over that period, from £442,202 to £802,077. These figures encompassed

spending in respect of its export markets, payments to PR agencies for campaigns, free give-

aways, and digital advertising. Brand advertising included print advertising, competitions

and sample support. Since 2016, the pursuer has also engaged in collaborations (eg a tie in

with the Loch Ness brewery to produce a limited edition ale aged in Tomatin whisky barrels

or in 2017 with Eteaket in Edinburgh for a whisky-based tea); entered competitions (eg

winning "Best Malt" for its 18-year old single malt whisky in the San Francisco World Spirits

Competition in 2016); sponsored events (eg the Belladrum Highland Musical Festival); and

since 2017 has published marketing reviews. She spoke to a separate spreadsheet detailing

the monies spent on marketing the Visitor Centre in 2019. This totalled about £10,000, the

largest two items being the production of leaflets for insertion into bedroom folders for

hotels and leaflets distributed to areas within the Highlands.

[130]

In her supplementary witness statement, she responded to statements produced by

Mr Frame and Simon Bath. She rejected the suggestion that the pursuer was trying to

monopolise the name Tomatin but, in her view:

"People come to visit the Distillery because it is a tourist attraction, not the village.

Tomatin Village is situated about a mile further away from the Distillery after you

have left the A9. Having visited the Distillery there is no real reason for a visitor or

tourist to go to the village itself, although now there is the Strathdearn café where

they could go if they wanted to have a bite to eat after visiting the Distillery."

She was also concerned about the risk of confusion between the pursuer and the defender's

proposed trading name of the defender (which she abbreviated to "TTC"):

"What we do not want is members of the public wishing to visit the Distillery

becoming confused between the development of Tomatin Trading Company Limited

("TTC"), which will be right beside the Distillery, and the Distillery itself. For

instance, from the name Tomatin Trading Company, it is not obvious what TTC does

or what it trades in. People might think that TTC is a trading division of TDC. They

might go to TTC's development which is after all on the way to the Distillery after

you come off the A9 at the Tomatin junction and think that they had arrived at the

Distillery. There is all the more danger of this if the development is built to look

reminiscent of a distillery."

She referred to the 2007 design statement from Braemore Estate's planning application for

the Site, which she construed as Braemore Estate "looking to create buildings at the

development reminiscent of a distillery." Having made the link between Braemore Estate,

Mr Frame and the defender, she said "[t]here is no reason not to think that, if the

development is built, it might be in such a style as to bring a distillery to mind and make

people think that TTC and [the pursuer] are one and the same". By contrast, in her view,

this was not the case with local business, such as Tomatin Firewood, where it was obvious

its business had nothing to do with the pursuer's.

[131]

Ms Masson strongly disagreed with Mr Frame's assertion that the Visitor Centre sells

very few goods and services for which the 2018 Marks are registered. In her view, it sold

tours of the Distillery which were educational. It has a bar selling drams of whisky which

can be purchased without someone having to go on a tour. In relation to branded goods, the

pursuer has sold the full range of goods for which it has trade mark cover in Class 35 under

the 2018 Marks.

[132]

In relation to the Visitor Centre, there were plans to expand the Visitor Centre "in the

not too distant future", but the momentum for this had been lost because of a high turnover

in the post of manager of the Visitor Centre. She explained that "We did look at expanding

the visitor centre a couple of years ago but did not reach a conclusion as to the best way

forward". This does not mean, however, that this project had been jettisoned.

[133]

In cross-examination, she was not initially sure that the pursuer exported 90% of its

product but accepted this once the Pagoda figures were put to her. She resisted the

suggestion that exports were the pursuer's "main" focus; it was not "primary" but was a

large part of the pursuer's business. Under reference to the figures in the pursuer's

spreadsheet of UK single malt whisky sales, she accepted that Tomatin was a small player in

this market, relative to the market leaders. She accepted that this was because the larger

brands had massive marketing budgets and also sold through mass distributers such as

supermarkets. In terms of brand awareness by the drinking general public (as opposed to

the connoisseur), she resisted the proposition that Tomatin was "far from well known". She

could not speak for the success of other brands; she accepted a lot of awareness came from

supermarket distribution. She believed that Mr Russell's view that Tomatin was "far from

being a well-known brand" was just his personal opinion. She did not accept as a fair

statement that Tomatin single malt whisky was a "small player" in the UK. It was put to her

that the pursuer's own expert had agreed that Tomatin was a small brand within the UK

industry. She thought there was a difference between saying a "small" and a "relatively

small" player. She agreed that Tomatin was a small player within the UK market when

compared to the market leaders such as Glenfiddich or Glenmorangie. She accepted

Mr MacLean's proposition that it was "absurd" to compare Tomatin with the leading

brands.

[134]

She did not accept that Tomatin single malt whisky was not well-known, albeit in

terms of brand recognition, she accepted it had a long way to go. She acknowledged that

the Tomatin single malt whisky brand was well known to connoisseurs. If one was

purchasing in a supermarket on price point, it was not well known.

[135]

In relation to the whole market in Scotch whisky (and not just single malt whisky),

she accepted "absolutely" that it was absurd to compare Tomatin's sales with those of the

brand leaders in blended whisky. The consumers of blended whiskies and of single malt

whiskies were "completely different markets". In relation to the question of who was the

typical consumer of Tomatin single malt whisky, she accepted as "fair" the pursuer's

expert's view that the typical consumer of Tomatin single malt whisky was a "single malt

whisky aficionado". She accepted that Mr MacLean's comments were fair from "an external

view point", she and the pursuer also had "internal insight" of how things were changing.

She accepted that from an external perspective, Tomatin single malt whisky was pitched

toward single malt whisky aficionados. Until recently, that had been the primary focus of

the pursuer's target consumer. She also accepted that the single malt whisky aficionado was

a very small minority of the consumer market across the whole UK market in blended and

single malt whiskies. She did not imagine that the pursuer's Tomatin brands would be

well-known to the category of consumer who drank blended whisky.

[136]

The pursuer's brand strategy had focused on the single malt whisky aficionados as

its key customers, because historically that was the pursuer's route to market in the UK.

While the brand was now listed in Tesco in Scotland, this was not in all stores and not

stocked all of the time. The pursuer's strategy was to focus on the top end of its range. As

old stock accumulated, they were able to do so. This did not mean they were losing the

focus on the lower end of their brand range, like Tomatin Legacy. She accepted that

generally the consumer of the higher end of the pursuer's range was less likely to be

confused about single malt whisky products.

[137]

In relation to the pursuer's plans for the Visitor Centre, she was not currently

involved but had been a few years ago. She confirmed that as at March 2018 there had been

no plans agreed for any development of the Visitor Centre. There had been a discussion

about flow and numbers. There were no current plans for it. She was challenged on her

evidence about confusion between the Development and the Distillery. Not every visitor

wanted to take a tour or visit; many just wanted to tick a visit to a distillery off their list of

things to so. She was also challenged on her evidence that there would be a visual similarity

between the Distillery and the Development. She accepted that the Distillery had an

industrial look and, under reference to the design statement in the 2018 planning

application, she accepted that what was proposed for the Distillery was in keeping in

character with what had been on the Site (especially the old Freeburn Inn). The evolution of

the defender's planning applications was put to her, for the purpose of demonstrating that

the former intention to have a pagoda feature was no longer maintained, which she

accepted.

[138]

In re-examination, parts of the design statement from the 2018 planning application

were put to her, of the intention for the Development to be "reminiscent of a village square

or a steading or a distillery", which she noted. Under reference to a photograph of a

pyramid-shaped chimney from the Glenfiddich distillery she agreed that this was part of her

concern that the Development was trying to look like a distillery.

[139]

On the question of the average consumer of Tomatin single malt whisky, she

explained that the target audience of their brand was not just the single malt whisky

aficionado; the pursuer had a broad marketing strategy and its portfolio spanned a huge

price range. They targeted different demographics. They had grown the Tomatin single

malt whisky by 85% in the last few years and that would impact on brand awareness. All of

the Tomatin single malt whisky in the UK went to whisky consumers. This had followed

the brand refresh in 2016. She believed that Tomatin was now a competitive player in the

market, which could not be said five years ago. She believed that that showed they had got

the price-to-quality ratio right. However, she accepted that the pursuer was not a market

leader in single malt whiskies.

The evidence of the pursuer's directors

[140]

Three directors of the pursuer gave evidence. They spoke to the ambitions of the

pursuer for the Tomatin brand, their concerns about the confusion between the Distillery

and the Development, and, for those who attended, the February 2019 meeting with

Mr Frame.

Stephen Bremner

[141]

Stephen Bremner, who has a background in marketing, has worked for the pursuer

since 2003 and became its Managing Director in June 2018. There was a considerable

overlap between his evidence and that of the pursuer's other witnesses especially about the

emergence of single malt whisky as a separate product of Scottish distilleries, the

development of the pursuer's own single malt whisky products, the early use of the Original

Word Mark, the advertising, marketing and promotion of the Tomatin brand, and the

awards won by some of the Tomatin-branded whiskies. I shall therefore focus on

Mr Bremner's evidence in respect of the pursuer's ambitions for the Visitor Centre, his

meeting with Mr Frame in February 2018, his knowledge of the Development and the

pursuer's decision to apply for the 2018 Marks.

The Visitor Centre

[142]

Mr Bremner described the Visitor Centre, which had opened in 1992, as being

important for the promotion of the Tomatin brand as it was the outlet for most of its

branded point-of-sale items. The pursuer had spent around £10,800 in advertising it in 2019

(the last year for which figures were available), which included a mixture of brochures for

tourist information centres throughout Northern Scotland and leaflets distributed in airports

and train stations. Other features of the Visitor Centre that Mr Bremner described as

important were the offer of a free dram (which Mr Bremner described as "a `sample' that

assists the consumer in making a buying decision, much like cosmetics companies do with

perfumes and enticing them to buy Tomatin single malt and/or some of our branded

goods"), and the opportunity to use the pursuer's Marks extensively throughout the

Distillery and Visitor Centre. In respect of the latter, these were used on the signage

throughout (Mr Bremner described the various internal and external locations where the

Tomatin name was used), as well as on the clothing of serving staff and on the retail offer.

This was all-important to creating "brand awareness" and extended to using the Tomatin

name in any collaborations with brewers and food producers. Two examples were

provided, namely, a beer collaboration with Black Isle Brewery in 2018, where the

2018 Word Mark was on the bottle, and the use of the 2018 Word Mark and logo on a

Tomatin single malt whisky fruit cake collaboration with Dean's of Huntly (offered from

about 2016 and sold in their respective retail outlets and online). Mr Bremner described

other collaborations with food producers such as fudge, jam, marmalade and honey.

[143]

In his parole evidence he confirmed the brand refresh in 2016 and he spoke to the use

of branded items at events to promote Tomatin. He explained that the focus on the brand

and the move away from bulk sales had to be a gradual process as it was necessary to build

up a quantity of aged stock in order to make a single malt whisky. So, for example, it took

12 years to store and label a 12-year old malt.

[144]

The pursuer's Word Marks were generally used on its retail offering from the Visitor

Centre on items such as t-shirts, glassware, water jugs and umbrellas, and photographs from

the pursuer's archives of earlier examples were produced of similar items.

[145]

Mr Bremner returned to the Visitor Centre later in h is evidence. He referred to the

several sets of architect's plans from 2017 (also described as "concepts"), to demonstrate that

the pursuer had been looking to expand the Visitor Centre from about that time. The

pursuer was not interested in increasing visitor numbers; it was too crowded. Rather, it was

wanting to reduce numbers; to replace quantity with quality, and to create a more

"premium" feel and an enhanced experience aimed at "high end" customers. Part of this

strategy was to introduce more goods for sale with the Tomatin branding, and this was why

the 2018 Marks were extended to Class 35. Mr Bremner denied stating to Mr Frame at any

meeting with him that the pursuer had no intention of expanding the Visitor Centre. He

had stated that the intention had been to limit visitor numbers. As he had explained earlier

in his evidence, the pursuer had looked at several concepts at the end of 2017 and beginning

of 2018, but these had been shelved in order to prioritise building new office space to

accommodate an increase in staff. The further development of the Visitor Centre is for the

next 2 to 3 years.

The meeting with Mr Frame in February 2018

[146]

The thrust of Mr Bremner's evidence on this chapter was that he was not aware of

the defender's intention to use the name Tomatin Trading Company in relation to the

Development until the last quarter of 2018. He modified that statement in his

supplementary witness statement, acknowledging that the pursuer was aware of the

defender's use of "Tomatin" both from the time of the defender's submission of the

2018 planning application and the subsequent reporting in the local media (which was in

March 2018). However, this did not give him any concern at that time. The pursuer had not

been aware of the incorporation of the defender in 2010.

[147]

He described the February 2018 meeting coming about as follows. In early

February 2018 a third party, Stephen Rankin, introduced Mr Frame by email to Mr Bremner

and the pursuer's then Chief Executive, Robert Anderson. Mr Bremner's understanding at

that time was that Mr Frame was building a retail unit as part of the Development and

wanted to stock the pursuer's whisky. Mr Bremner was aware that Mr Frame had asked the

pursuer about this quite a few times in the past. Mr Bremner and Mr Anderson met with

Mr Frame on the morning of 16 February 2018 at the Distillery. While the finance officer of

Braemore Estates had sent a copy of the defender's latest set of plans for the Development,

by email timed at 8:46, Mr Bremner was fairly sure he had not seen this at the time, as it had

come just before the meeting. In any event, he commented that, while the email subject

heading was "Tomatin Trading Co Ltd", the email was sent from a "Braemore Estates"

email address. He thought nothing of this at the time.

[148]

Mr Bremner described Mr Frame introducing himself, producing a business card

with the name "Braemore Estate", and asking about the pursuer's success with its business

and the Distillery. Mr Bremner is adamant that, contrary to Mr Frame's evidence, the

business card handed over did not include the words "Tomatin Trading Company".

Mr Bremner was also clear that there had been no discussion at that meeting of the nature of

the Development. Mr Frame had inquired about leasing some land from the pursuer, but

which was quickly rejected as the pursuer might itself need this in the future. Mr Bremner

was also clear that at no time did Mr Frame disclose his ingtention to change the

Development's name from Juniper Village to The Tomatin Trading Company. There was a

courtesy exchange of emails a few days later but no follow up by either side. Mr Bremner

described being advised by the pursuer's trade mark agents of the defender's Application in

January 2019. One of his concerns, as he described it, was that the Application :

"had been registered to cover whisky and Scotch whisky. Not only this, the

application had been made to cover an extensive number of goods and services,

many of which we offered. It was only then that I thought "wow", he is actually

looking to use "Tomatin" as a brand".

After an exchange between the parties' agents, the defender amended the Application in

March 2019 to remove class 33 (Scotch whisky).

The defender's use of Tomatin

[149]

Mr Bremner was highly critical of the defender's proposal to use "Tomatin" in the

name of the Development. It was "illogical" to name the hotel "Holiday Inn Express

Inverness South, Tomatin". If Tomatin were well known, there would be no need to use

"Inverness". The café was going to be the "Findhorn Café", so what was the point of using

Tomatin in relation to the Development and he queried what the defender would be

"trading". He noted Mr Frame's keenness to have the pursuer on board with the

Development. In his view, the pursuer had accrued goodwill in the name globally and it

wished to protect its rights. He was concerned that the defender's use would impact on the

distinctiveness of the pursuer's brand. The pursuer had no control over how the defen der

would operate the Development, and he had concerns that it might damage the luxury

image the pursuer was striving for. He distinguished between use of the name Tomatin by

other local businesses, which had not prompted the pursuer to act, and the defen der's

proposed use:

"[The Tomatin Country Inn and the Tomatin Country Store] were both smack bang

in the middle of the village and very much catered for the local community, so

were of absolutely no threat to the Distillery and certainly not looking to cash in on

the Distillery's success ... Neither the Inn or the Country Store had any interest in

developing their business as a brand either so both were pretty insignificant."

He had concerns about consumers confusing the Distillery with the Development an d that

they might think the two were associated. He referred to negative coverage of Mr Frame in

the press and the potential reputational damage (from a misplaced association with him) to

the Tomatin brand. He believed that this was exacerbated by the proximity of the

Development to the Distillery (whose respective entrances he estimated as being only about

15 metres apart) and by Mr Frame's "extensive" use of the Tomatin name. That included

using the Tomatin name for the 2018 planning application, and the promotion of the

Development on the defender's Website ("tomatintrading.co.uk") and on its Twitter and

Facebook pages.

[150]

On the issue of confusion said to arise from the proposed Development, Mr Bremner

referred to a few recent contacts the pursuer had received offering, respectfully, financial

and interior design services for the Development.

[151]

Mr Bremner echoed the evidence of other witnesses for the pursuer that the Distillery

preceded the village and took its name from the Tomatin Estate. He was disparaging of the

village: apart from a village shop, primary school and a village hall, there was not much else

there and it was not well known outwith the local area. It was not somewhere that people

would visit. The local area was known as Strathdearn and the Distillery was the only tourist

attraction in Strathdearn.

The application for the 2018 Marks

[152]

Mr Bremner explained that the pursuer was "proactive" in seeking intellectual

property protection and it had 80 trade marks or logos registered internationally. The

Original Word Mark has been protected in class 33 in Japan since 1991, in Canada since 2006,

throughout the EU since 2005 and the pursuer's logo mark was registered in the USA in

class 33 in 2017. In respect of the UK, Mr Bremner said that the pursuer

"had been discussing with our trade mark agents for quite a few years, prior to

2018, about registering trade marks in the UK in different classifications relevant to

[the pursuer's] business". (Emphasis added.)

He believed it was "standard practice" for trade mark agents "to discuss with and advise

their clients to do so". He described these discussions:

"The trade mark agents had a good idea as to what goods and services we were

offering as a business. They knew that we were selling promotional items and had

people in our team in the market educating consumers and trade partners but that

we had no trade mark protection in the relevant classifications. They had spoken to

us on a few occasions about expanding our registrations by protecting not just the

name but additional aspects such as our logo and bottle shape, as well as expanding

our classifications beyond class 33." (Emphasis added.)

[153]

In relation to the timing of the application for the 2018 Marks, Mr Bremner explained

that the pursuer had not acted on this previously because

".... we were never that concerned about protecting other classifications because of

the remote area we work in and we did not think anyone else would come along

who would be a challenge to this. Whilst we had been speaking with the trade mark

agents about this for some time prior, they had seen some media coverage about the

defender's development in 2018 in the Scotsman newspaper and encouraged us into

filing. .... This coverage acted as a prompt for us to action the expansion of our trade

mark registrations to provide a wider breadth of protection for the Tomatin brand,

in line with what we were offering and the direction we wanted to go with the

business.

[...]

The 2018 Word Mark is an extension of the Original word mark to cover uses other

than Scotch whisky. The whole point of the 2018 Word Mark was to provide a

wider breadth of coverage for the Tomatin name, in line with the goods and

services we were offering at the time and were planning to offer in the future. It

also made sense to register the Logo mark as we had undergone the brand refresh in

2016 and the visual element of the logo was really important to us in promoting the

Tomatin brand." (Emphasis added.)

Mr Bremner explained the justification for seeking an extension to cover the Additional

Classes:

"From our point of view, we have the visitor centre at the Distillery and through the

visitor centre we have been selling all kinds of goods we class as "promotional

material" which falls under class 35, from fudge and cake to glassware and hats,

since at least 2012. These are goods we give and sell to wholesalers and retailers,

both in the UK and overseas, when we are promoting the brand in the market. They

are very relevant to our business and as we develop as a brand it makes sense to

protect those items.

[...]

Educational services under class, 41 are also very relevant to our business. At the

Distillery, visitors are there to learn about Scotch whisky and our brand but members

of the [pursuer's] team also go out and educate consumers and our distributor's sales

people within the market place this is a fairly big strand of our business. It is a

creative and cost effective way to get in front of a group of consumers and tell them

about your brand and let them taste it, potentially becoming Tomatin brand

ambassadors and recommending us to others.

Additionally, we have had our bar at the visitor centre since 2012 and have offered

our pop-up bar a part of corporate hospitality and charity events 2012. We have also

offered tours at the visitor centre since 2012 and the educational videos which

provide visitors with information relating to whisky and distillation since 1993 so it

made sense to register the 2018 Marks in Class 43 as well."

Mr Bremner understood that this was an approach taken by other distilleries: "to protect

their brand for their core offering of Scotch whisky and they will then seek to protect other

goods and services they offer or which are a natural fit for a distillery later down the line".

[154]

Mr Bremner also described the pursuer's plans for expansion of its use of the Marks,

including the 2018 Marks, as follows:

"9.1

Our plan to expand the use of our 2018 trade marks, where we do not

currently offer the goods and services for which they are registered is mainly linked

to the visitor centre. We want to create a "brand home" at the visitor centre but we

need to decide as a business what that encompasses and what services we will offer.

We do not yet know exactly what this will look like.

9.2

The retail services under Class 35 relate to the point of sale items at the visitor

centre and those promotional items we can take to events to offer for sale or give to

consumers. I have set out our position below in relation to those goods under

Class 35 which we do not currently offer:

9.2.1 it has been a topic of discussion between the Distillery team for some

time now as to whether we would offer other alcoholic beverages. We have

looked at gin as it would be a natural fit due to Tomatin meaning "Hill of the

Juniper Bush". We have also spoken about possibly a rum as it is popular at

the moment. These are products that we could develop in the future;

9.2.2 we sell Loch Ness water at the visitor centre but we have discussed

selling Tomatin branded bottled water and it is something we may do in the

future;

9.2.3 we have offered calendars and greetings cards in the past and may

wish to do so again. These are common items to have for sale in a visitor

centre, and are popular with tourists;

9.2.4 magazines could be seen as an expansion of our promotional

brochures going forward;

9.2.5 in terms of jewellery, we sell pin badges utilising the word mark and

the hogshead motif. We also previously sold branded cufflinks under the

Antiquary brand and have considered the same for the Tomatin brand in the

future;

9.2.6 tea towels and aprons have been sold by us in the past and which we

may wish to sell again in the future at the Distillery's Visitor Centre as

branded Tomatin products. Both items which would be used and worn by

staff in bars, so go hand in hand with the sale of Scotch whisky. It is logical to

9.2.7 in relation to Christmas decorations, there is the potential that, in the

future, we would sell miniatures as decorations or branded baubles.

9.3

In relation to the Class 43 services we do not yet offer:

9.3.1 our visitor centre is an important part of our business. It is an

underdeveloped part of our business and an area we really want to grow in

the right way as part of our Tomatin brand. [Mr Bremner referred to] email

correspondence with Bright Interiors, from December 2017 which was

forwarded to me and other members of the team, setting out an indicative

costs budget for visitor centre expansion options, including improved

provision of bar and education services;

9.3.2 it makes sense to have trade mark protection when it comes to food

services, as going forward, it is a real possibility that we would have

restaurant or eating facilities at the Distillery. We are in the business of

selling alcohol and bars and restaurants go hand in hand with that. We also

do not know yet if our "brand home" will involve just a tour and tasting or if

it will be much wider, for example to include a food offering and/or a cocktail

bar;

9.3.3 we have also considered whether we would want to have meeting

and conference facilities on site or if we want to offer people the ability to

have a wedding at the Distillery, with banqueting services.

9.4

If we went out and pushed the Distillery as an attraction, we could easily

attract visitor numbers pushing 100,000 but at the moment that is not feasible. We

had to cut our bigger bus tours, as a lot of the time they would come to the shop at

our visitor centre, use the toilet, sometimes have a taste of whisky, buy a miniature

bottle of Tomatin and leave. This clogged up the visitor centre so customers who

were genuinely interested in a tour or tasting couldn't do that. We hope to offer a

more bespoke offering and we are looking at different types of tours. Our plan is to

gradually build numbers back up at the visitor centre at the same time as expanding

the offering there.

9.5

The reality is we do not yet know what the visitor centre will look like in

2-3 years but there is every chance that it will have a food or beverage offering. A

traditional bar offering is also not out of the question. Having a bar offsite, in

Inverness, is something which we have also explored. We need to be in really strong

financial position to fund any expanded offering. We are getting into that position

now and hope to get plans in place over next year or so." (Emphasis added.)

[155]

In his supplementary statement Mr Bremner returned to the circumstances that

prompted the pursuer to obtain the 2018 Marks. He denied that these were made in

response to Mr Frame's Development.

"The press coverage I saw around about this time pointed to there being several

different businesses making up the development. This consisted of such aspects as

4 retail outlets, a farm shop, a bakers and a Bonnie Prince Charlie restaurant. My

feeling was that all of the businesses would have their own name and that the overall

development would be called `Juniper Village' or the likes. I therefore did not feel

threatened by the Tomatin Trading Company name. However, as explained in

paragraph 7.4 of my original statement [see para [153], above] it acted as a prompt

for us to act upon our trade mark agents suggestions to provide a wider breadth of

protection for the Tomatin brand, as we thought other businesses could utilise the

name inappropriately to take advantage of the goodwill and reputation we have

built up over time. We had no inclining [sic, inkling?] then that this was the

intention of Mr Frame." (Emphasis added.)

Cross-examination

[156]

In cross-examination, Mr Tariq first explored the topic of the pursuer's position in

the UK market for single malt whiskies. Mr Bremner accepted that the pursuer's focus in

the last 10 years had been to develop the Tomatin single malt whisky brand. The pursuer

also had other brands, such as Cu Bocan and a selection of blended whiskies (Talisman,

Big T, The Antiquary, Ancient Clan and others). Mr Bremner accepted that these were

distinct brands in their own right, but that some carried the Tomatin motif. He accepted that

when he described the pursuer as being "proactive" in getting trade mark protection

(some 80 in number for 60 countries), this was because of its international focus. The

pursuer's sales figures for 2019, broken down by brand (which the pursuer had provided to

Pagoda), were put to him. These figures showed a total of 140,662 9L cases exported and a

total of 5,459 9L cases sold within the UK. Of the latter figure, the Tomatin single malt

contributed 4,498 9L cases, Cu Bocan contributed 576 cases. The remaining 385 9L cases

were its blends (Antiquary Deluxe Blend and Big T). Mr Bremner accepted that these

figures supported the position that 90% of the pursuer's product was exported and its sale of

single malts within the UK amounted to only 7% of its sales. Mr Bremner resisted the

proposition that in respect of sales of single malt whisky in the UK, Tomatin was a "small

player". He accepted that the pursuer was a small player in the global market. The

transcript of an interview Mr Bremner gave in 2016 was put to him, in which he described

Tomatin as "quite a small player in the industry"; that the UK market was "very competitive

for smaller companies" and that in order to be successful one had to devote a lot of

resources to succeed in the UK market; and for that reason the pursuer had focused on the

export market. Mr Bremner accepted that Tomatin was a small player in the whisky

industry.

[157]

The same point was made under reference to the spreadsheets of the global and UK

sales of single malt whiskies (showing that the pursuer had sold 3,000 9L cases of single malt

whisky in 2019, or 0.3% of the UK market: see para [59], above). Mr Bremner accepted that

Tomatin was not promoted as a mainstream brand in the UK. He accepted as "fair"

Mr Russell's observation that Tomatin single malt whisky was "far from being a well-known

brand" of single malt in the UK; that it was a small brand within the small market for single

malt whiskies. He agreed that, in terms of volume, it would be "absurd" to compare the

Tomatin brand with the leading brands such as Glenfiddich. Mr Bremner also accepted that

it was not just in relation to its market share that Tomatin was a small player; this was also

true when it came to consumer awareness and that it was absurd to compare Tomatin with

the bigger brands. In his view, this was because they had massive marketing budgets. He

accepted that this was so, not just in terms of sales, but because of advertising, promotion

and consumer awareness.

[158]

In relation to who was the typical consumer of Tomatin single malt whisky, and

under reference to Mr MacLean's observation (in his supplementary report) that Tomatin

single malt whisky was known to the "single malt whisky aficionado", Mr Bremner

accepted that that was a fair description of its key consumers. The aficionado was the focus

of its brand. He expanded on this: the single malt whisky aficionado bought specialist

products, like the higher-aged expressions (starting from 14 to 18-year old ones) whereas the

pursuer's entry level products (eg Legacy) and 12-year old products would not be of

interest. The majority of the pursuer's retail channels were via specialist retailers. He

accepted that the pursuer's focus had been on specialist retailers. Mr Bremner also accepted

that, in contrast to the pursuer, the larger brands secured their large market shares by selling

through national and mass retailers, like supermarkets.

[159]

In relation to the pursuer's plans for the Visitor Centre, several of the pursuer's

business plans were put to Mr Bremner. None of these referred to the development of the

Visitor Centre. Mr Bremner's response was that these were focusing on the objectives for the

brand, not the overall objectives of the company as a whole. He accepted as correct an entry

that recorded that the pursuer's aim was to stabilise visitor numbers for the next 3 years and

to replace volume with quality. He acknowledged that the numbers of visitors at the Visitor

Centre had dropped to 34,000 in 2019. It was not a long-term ambition to grow the Visitor

Centre; rather, the intention was to reduce visitor numbers as it could not cope with the

visitor numbers and it wished to stop bigger coaches visiting. Mr Bremner acknowledged

that the sum spent advertising the Visitor Centre in 2019 was only around £10,800 and that

this was consistent with the ambition to reduce numbers. He could not comment on how

this compared with other distilleries. The pursuer did seek to build brand awareness via

social media, and which does not have an associated cost.

[160]

In terms of the sales from the Visitor Centre, he was challenged that these were not

identified by reference to different products. Mr Bremner confirmed that the pursuer did

not sell any of the standard blends at the Visitor Centre; it sold Tomatin and Cu Bocan single

malt whiskies, and the Antiquary. The majority of the sales (by value) were the Tomatin

single malt whisky brand. The defender's analysis of the sales from the Visitor Centre

(analysed by type of product) for 2019 was put to him. Mr Bremner accepted that 70.77% of

all sales at the Visitor Centre were whisky; that tours accounted for 20.04% of sales; and that

Tomatin-branded items accounted for about 5.7%. The latter amounted to around £50,000

which corresponded with the figure of £35,000 in Mr Bremner's own witness statement. On

these figures, sale of non-whisky retail items amounted to only 6% of the Visitor Centre

sales. (This would equate to 0.3 % of the pursuer's total turnover.) Mr Bremner accepted

that a visitor to the Visitor Centre was visiting to get a Scotch whisky experience, and not a

retail experience. He explained that most visitors went on a whisky tour, tasted a dram and

bought a bottle of whisky.

[161]

Photographs of the Visitor Centre from the defender's private investigator were put

to Mr Bremner. The layout was of a shop with a counter and till, and a small bar area

(shown below):

Mr Bremner accepted this and noted that at the height of summer there was a separate bar

area for tasting and a seating area in the still house to watch an educational video. He

resisted the description of this as a small retail area, but it was "not massive".

[162]

Under reference to Mr Bremner's comment that the pursuer had explained that the

2018 Marks were mainly linked to the Visitor Centre, Mr Tariq explored the pursuer's plans

for the Visitor Centre. Mr Bremner said the main reason for obtaining the 2018 Marks was

because they were selling things in the Visitor Centre for which the pursuer did not have

registered marks. He was pressed on plans for the Visitor Centre as at March 2018, and that

there were no firm plans at that time. Mr Bremner explained that the visitor numbers had

meant the Visitor Centre could not cope. The Visitor Centre was "a work in progress"; the

pursuer was not sure what its future shape would be. It was "very much under discussion".

Mr Bremner accepted that there were "no concrete plans" going forward at that time as to

what the Visitor Centre would look like. Mr Bremner also accepted that since March 2018

there had been no expansion. The pursuer had focused on marketing. It shelved plans for

the Visitor Centre because it was running out of office space, so spending was diverted to

that and plans for the Visitor Centre were put on hold. He would not accept that the stage

had never been reached where there had been concrete plans, and he referred to the

discussions the pursuer had had with the architects.

[163]

The Additional Classes were put to Mr Bremner under reference to section 9 of his

witness statement (set out above, at para [153]):

Mr Bremner accepted that as at March 2018 the pursuer had had "no concrete

plans" for the sale of alcohol by other producers (Class 35). At most they had had a

beer collaboration. Going forward this was a "point for discussion" with

management; they were considering producing a gin or a rum, but they had no

concrete plans.

In relation to a restaurant, there were "no concrete plans" for this. He

described the pursuer's discussion as "fluid";

The pursuer had "no concrete plans" for conference, meeting, banqueting or

wedding facilities as at March 2018;

Under reference to the architectural or "concept" plans dating from late 2017, which

Mr Bremner had referred to, he accepted that these were about a new landscaped entrance

or a linking lobby (to be used as a waiting area for tours) or to increase exhibition space by a

modest amount. None of these proposed a large expansion of the retail offer, although

Mr Bremner explained that the intention was to increase the lobby so as to ease congestion

in the retail space. He accepted that none of these proposed a kitchen or restaurant space,

nor any plan to convert any part of the Visitor Centre into a café. These were no more than

"broad ideas" considered at a "high level", which had all been shelved.

[164]

In relation to the timing of the pursuer's application for the 2018 Marks,

Mr Bremner's statement that those marks had been applied for to protect what was being

sold at the Visitor Centre was tested. Mr Bremner accepted that the pursuer had long sold

branded items from the Visitor Centre (a photo of items from the 1990s was put to him) but

that the pursuer had not sought trade mark protection at that time. Prior to 2018, no one

had tried to stop the pursuer from selling such items. He accepted that the pursuer had

produced no documents from its trade mark agents to vouch the discussions Mr Bremner

had referred to. He was pressed on the assertion in his supplementary statement that the

press coverage of the Development had prompted the registration of the 2018 Marks. The

pursuer's trade mark agents had contacted the pursuer because they had seen an article in

the Scotsman. Mr Bremner maintained that he was not then aware that the defender's

intention was to use Tomatin Trading Company for the Development. There was nothing in

the press cutting to indicate that. The pursuer's trade mark agents had noted that another

business was moving into the area and using the "Tomatin" name in their company name,

and that it was wise to protect the items they were currently selling. He accepted that there

was no restaurant and no plans for one.

[165]

In relation to the February 2018 meeting, Mr Bremner recalled receiving the email

from Braemore Estates on the day of the meeting with Mr Frame, but he could not recall

noting its subject line ("Tomatin Trading Co Ltd"). A copy of the business card said to have

been handed over at the meeting was put to him. Mr Bremner was adamant that the

business card handed over simply stated "Braemore Estates"; that it did not have "Tomatin

Trading Company" on the reverse and that there was no mention of that name by Mr Frame

at the meeting.

The media coverage of the Development in March 2018

[166]

The various newspaper articles from 17 and 18 March 2018 about the Development

were put to Mr Bremner. He initially cavilled at the proposition that there was "substantial"

coverage, but he accepted there was coverage at that time which he had seen, and that some

of this was in national newspapers, such as The Times and The Scotsman. He accepted that

none of the press articles mentioned the Distillery; that several mentioned Tomatin Village

and also the location of the site at the Tomatin junction with the A9; and that the elements of

the proposed Development mentioned included retail services for food and beverages, a

restaurant and a conference centre. Mr Bremner was challenged that the pursuer had

applied for the Additional Classes, because these covered the kinds of offering mentioned in

these press cuttings. He maintained that there had been "ongoing" discussions about these

things. He resisted the proposition that the 2018 Marks for the Additional Classes had been

registered as part of a deliberate strategy to seek a broad protection for the Tomatin mark.

Mr Bremner maintained that this was not so; that the pursuer wanted to cover items it was

currently selling and that otherwise it was to cover matters that were a natural fit for the

business going forward (even if there were no concrete plans at present).

[167]

On the issue of confusion, Mr Bremner accepted that the defender was not supplying

any services using the Tomatin Trading Company name at the Development or any other

site. He accepted that someone visiting the Distillery was likely to have an interest in Scotch

or single malt whisky. He accepted that drinkers who were interested in single malt whisky

or the Distillery were unlikely to end up at the Development's hotel or restaurant in the

belief that they had arrived at the Distillery. Maybe a general consumer might be confused.

He accepted that a consumer looking to take a Distillery tour but who arrived at the

Development would realise their mistake. Even the more casual visitor intending to take a

quick look at the Distillery, would appreciate the difference between the Distillery and the

Development.

[168]

The various road signs at the A9 and the T-junction at the old A9 were put to him.

Mr Bremner accepted that a traveller was unlikely to get confused and that it was unlikely

that the defender would use the word "distillery" in association with its Development.

[169]

The entries from one of the defender's business plans ("the defender's Business

Plan"), its reference to wider tourist links and its aim to become a destination in its own

right were put to Mr Bremner. He accepted that the defender's target consumers were

tourists, local and business traffic and the "silver pound" of the 60-plus age group. He

cavilled that a "trading" company had nothing to do with leisure. He accepted that his

suspicion that the defender was trying to "piggy back" off the success of the Distillery, or to

create an association with it, was "pure speculation". He also accepted that passages of the

defender's Business Plan focused on the proximity to the junction; that it referenced an

ambition to be a destination comparable to House of Bruar; and that there was no mention

of the Distillery. Mr Bremner resisted the proposition that the pursuer's business and the

defender's proposed business operated in completely different fields of activity.

Mr Bremner fell back on the similarity because of the retail offer of drinks; this was the only

element that competed with the Distillery.

Re-examination

[170]

In re-examination, Mr Bremner confirmed that the scope of the pursuer's objection

was to the use of the word Tomatin, but not to the Development itself. He reiterated that

one of the stated ambitions in the pursuer's 2018 Budget Presentation had been to develop

the Visitor Centre to showcase the pursuer's brands and to offer consumers an exclusive

whisky experience. The pursuer had not abandoned its ambition for the Visitor Centre; it

had prioritised other projects. Several images from the defender's website were put, to

enable Mr Bremner to assent to these as providing a basis for concern (but the date at which

Mr Bremner first became aware of these was not taken).

Robert Anderson

[171]

Robert Anderson spent most of his working life with the pursuer, becoming its Chief

Executive in 2010 and retiring from that position in May 2018. He had no involvement in

the decision to obtain the 2018 Marks. His relevant evidence, pertaining to the Tomatin

brand and the February 2018 meeting with Mr Frame, was in short compass. His start as

Chief Executive coincided with the period when the market in single malt whiskies began to

grow. The Tomatin name was always used in conjunction with the Distillery's single malt

whiskies. The Tomatin logo was also regarded as important, although it went through a

number of iterations over the years. From 1989, the pursuer began to focus on selling

Tomatin-branded goods from the Visitor Centre. At that time it sold the Big T, then later the

Antiquary and Talisman, in addition to the Tomatin single malt whisky. The latter contained

the Tomatin name and logo. While it had sold tourist "knickknacks" which did not then

feature the Tomatin name or logo, these were later replaced with branded items. Latterly, it

was all about building the Tomatin brand.

[172]

The February 2018 meeting with Mr Frame was informal, in the nature of a "meet

and greet", and instigated at Mr Frame's request. While he may have seen the email (with

"Tomatin Trading Co Ltd" in the subject-line), he could not recall receiving this or

attributing any significance to the use of "Tomatin". It had come from Braemore Estates.

He had not reviewed the attachments to the email. Nor could he recall receiving a business

card from Mr Frame. Mr Anderson had opened up the meeting in his usual way with new

visitors, by detailing the history of the Distillery, the Visitor Centre and the brand's global

position. He was clear that Mr Frame had not mentioned the name Tomatin in association

with the Development. Had he done so, Mr Anderson would have objected to this on the

ground of potential confusion with the Distillery. He distinguished the use of Tomatin by

other businesses (eg "Tomatin Firewood"). He noted that the follow up email from

Mr Frame after the meeting was from Braemore Estates. He understood the reference to

"Tomatin" to be to the Distillery. He was clear that the pursuer did not want to sell its

goods at the Development, as this would adversely impact the Visitor Centre. He rejected

Mr Frame's evidence that they had met before; the first time he had met Mr Frame was at

the February 2018 meeting.

[173]

In respect of the media coverage of the Development in March 2018, he was sure that

there had been some, but he did not have much active recall of it. He accepted that the

media coverage of the Development was not described by reference to the Distillery, which

was not nentioned. He accepted that the junction and the A9 were busy, especially in the

summer months. He had welcomed the Development at the time; his concern was with its

use of the name "Tomatin".

Graham Eunson

[174]

Graham Eunson has worked in the whisky industry for 30 years. He was appointed

director of the pursuer in 2019 and is director of distillery operations. Prior to that he had

been the General Manager and latterly the Master Blender at the Distillery from about 2011.

One of his roles as a director was to develop the pursuer's strategies. He did not believe that

the pursuer marketed the Visitor Centre, but it was the brand's "shop window" and the

pursuer had plans "to ramp up" the marketing of the Visitor Centre. He had had no

involvement in the decision to obtain the 2018 Marks. In relation to the Site, he had been

aware of the various proposals promoted over the years by Braemore Estates. He was aware

from about February 2019 of the change of name to Tomatin Trading Company. This was

because this was brought up at a meeting of the pursuer's senior management on

28 February 2019, and it was noted that the pursuer's lawyers had written to the defender to

stop using the Tomatin Trading Company name.

[175]

He also spoke to instances of confusion between the name of the Development and

the pursuer, namely: a relative in the hotel industry in Dundee had sent him a WhatsApp

asking if the pursuer was moving into the hotel industry (this was accompanied with a

laughing/crying emoji); a neighbour and a few friends had made similar comments after

seeing the media coverage in March 2018 about the Development.

[176]

In relation to the pursuer's plans for the Visitor Centre, he noted that a toilet amenity

block had been added in 2010 or 2011 but this was insufficient to meet increasing visitor

numbers. The pursuer had engaged three different architects in 2017, but none of their

proposals progressed because the pursuer did not like what was proposed for various

reasons, and plans for the Visitor Centre were put on hold. The pursuer had wanted to

extend floor space and their services offered at the Visitor Centre. An enlarged Visitor

Centre would enable the pursuer to accommodate more visitors in the peak summer months

and to provide better facilities for tasting. The pursuer was considering using one of the

original houses to host tasting events.

[177]

He disagreed with Mr Frame's description of the village as well known to tourists

because of its location near the A9. He described it as follows:

"The village of Tomatin is not on a main thoroughfare which would attract passers-

by. Instead, it lies in a valley off the beaten track. You cannot see the village from the

Distillery or TTC's development site. If you turn off the A9 at the Tomatin junction,

after reaching the Distillery, you have to continue along a narrow B-road for about a

mile to get to the village. It is really little more than a small collection of old and new

houses. It is in no sense a bustling, country village which might attract visitors in its

own right. For instance, it has no proper high street with shops, pubs or restaurants

to make a detour to it worthwhile. At the end of last year, a community hall and

sports complex called the Strathdearn Centre was opened in the village and this has

a shop and café."

[178]

The first topic of cross-examination related to the Visitor Centre. He confirmed that

the proposals in 2017 came to nothing. The management team could not agree a way

forward, as there was also consideration of a bottling operations and bigger offices. By 2017

to 2018, bigger offices became a greater priority, as the pursuer had more staff. At present

there were no firm plans to expand the Visitor Centre. The pursuer would have to consider

the impact of Covid. As at March 2018 there had been no plans for a restaurant or a

banqueting facility. They had no plans for having catering built at that stage. They were

looking at more flexible room for different kinds of events.

[179]

In relation to the issue of confusion, Mr Eunson accepted that there had been no

construction works for the Development. He had not been aware of the use of the word

Tomatin on a jar of strawberry jam on the defender's website. He accepted that the pursuer

was not in the hotel business and, generally distilleries did not run hotels. He also

acknowledged that in the extensive coverage of the Development and the history of the Site

100

in the Press and Journal of 26 March 2018, there had been no mention of the Distillery. In

respect of the WhatsApp message he had received, it was put to him that this was in jest and

teasing; he could not speak for the sender. He did not know the names of the other people

whose comments he had referred to. He was pressed on his belief that visitors might

confuse the Development for the Distillery. He side-stepped the question that the visitor

interested in single malt whisky was unlikely to be confused; many types of visitors came,

including accidental tourists looking for something to do in bad weather or looking to tick a

visit of a distillery off their list of things to do. The four sets of road signs (two of which are

above, at para [52]) and the Distillery's own two large signs were put to him with the

proposition that if one were looking for the Distillery, one was unlikely to miss it because of

the signage. His answer was that that depended if one followed the signs; not everyone

reads signs correctly. He accepted that if new on-off ramps were created as part of the

dualling of the A9 at Tomatin, the visitor coming off the A9 would reach the Distillery

without passing the Development. He resisted the proposition that the chance of confusion

was pretty low; it depended on one's satnav. He accepted that those looking for the

Distillery or a tour there were likely to find the Distillery.

[180]

In re-examination and under reference to his comment that there were no concrete

plans to extend the Visitor Centre, he explained in the long term the pursuer was having

discussions about how to make the best use of what it had. It was considering potentially

increasing warehousing or relocating the office space to use that for visitors. This could be

turned into a restaurant or bar. There were always ongoing discussions about how to meet

the demands for whisky tourism.

101

The defender's proof

Mr Frame

[181]

William Frame is the sole director of, and moving force behind, the defender. He has

been a businessman and property developer since the late 1980s, including the business

known as Braemore Estates.

[182]

A substantial amount of his evidence was not directly relevant to the issues arising in

these proceedings (eg the history of how became interested in and acquired the Site, the long

planning history preceding the grant of the 2018 planning permission, the vagaries of the

economic climate over the last two decades, the nature of the pursuer's business or its sales

from the Visitor Centre, or his subjective understanding of the pursuer's motivation in

applying for the 2018 Marks). Other chapters of his evidence either repeated the evidence of

others (the history of Tomatin as a place name or repeating the findings of the private

detective instructed by the defender about the Visitor Centre) or trespassed into the territory

of the experts (eg on brand awareness) or of the court (the issue of confusion, the invalidity

of the 2018 Marks, whether there has been trade mark infringement or passing off). The

latter passages were objected to (see the Notes of objection in Appendix 1 to this Opinion).

Accordingly, notwithstanding the length of his witness statements or the length of time he

was in the witness box, his relevant evidence was in relatively short compass. The relevant,

albeit contentious issues, included what transpired at the February 2018 meeting, his

proposals for the Development and the use of the defender's name in association with it in

place of "Juniper Village".

102

The name "Juniper Village"

[183]

In respect of the Site, he believed that the Little Chef and petrol station which had

formerly stood on the Site (he had both demolished after he acquired the Site) were busy

and, given the location of the Site, it could be a successful development. The architect had

chosen the "Juniper Village" name (used in the 2007 and in some of the later planning

applications):

"purely for marketing and illustrative purposes. It was never intended for it to be the

name of the final development. There is no Company incorporated in this name".

It was used for a short period. He said he went along with it "purely for the purposes of the

planning application". He confirmed in his parole evidence that, while the 2007 planning

application had referenced some features typical to a traditional distillery (eg a pagoda-like

structure), this formed no part of the 2018 planning permission. The concept behind the

appearance was to take the best of Highland vernacular using Caithness slate, stone and

other building materials commonly used in any Highland village.

The defender's intentions for the Development

[184]

He explained that he had incorporated the defender in 2010. The Development will

offer a range of quality goods and services. The consented development included plans for

a 45-bed hotel, restaurant, retail space and a lot of outdoor spaces. It will be a centre of

hospitality, with a farm shop, to showcase the best of the Highland larder. He explained

that the name for the Development, as the Tomatin Trading Company "was the result of a

thought process as to what would be the best name for the development going ahead, given

its diverse offering". After the 2018 planning permission was granted, the name "Juniper

Village" was dropped. The use of "Tomatin" was to reflect the location of the Development.

103

The use of "trading company" was intended to encompass what the Development would

do: it was a trading post on a busy road as a sort of general trading company offering a

range of goods. He had thought long and hard about the name and had incorporated the

defender under that name in 2010. He referred to the Business Plan prepared in respect of

the Development. He was confident about the success of the Development and the kind of

visitor it would attract. Tourist and other traffic was increasing on the A9. The 2019 edition

of the Scottish Transport Statistics ("the STS") showed that on average 10,778 vehicles pass

the junction daily. The North Coast 500 had brought in year-round tourists. He expected to

attract tourists, householders and business custom. He also hoped to draw on the existing

settlements of the Spey Valley, Inverness, Nairn and Elgin. MKA Economics had prepared

the "Juniper Village, Tomatin Socio-Economic Statement" for the Development ("the MKA

Report") (which had been submitted in support of the 2018 planning application), and this

confirmed to him that

"it was better to state the name of the location in the title of the development. The

Tomatin Trading Company reflected the location and style and the variety of the

offering along the lines of the East India Trading Co or the Hudson Bay Company".

He noted that Tomatin had been used in the name in a variety of local businesses (Tomatin

village shop, Tomatin Country Inn, Tomatin Filling Station and the Little Chef at Tomatin,

Tomatin Firewood) and in a number of local facilities (the Tomatin railway station, the

Tomatin Golf Club, Tomatin Community Shop, Tomatin Primary School, Tomatin Football

Club.

The February 2018 meeting

[185]

In relation to pursuer's awareness of the defender's intentions, Mr Frame stated he

had met Mr Anderson "on numerous occasions" at the distillery and that it was

104

Mr Anderson who had suggested the meeting with Mr Bremner because he was shortly to

take over as the pursuer's managing director. He had instructed the email be sent shortly

before the February 2018 meeting attaching the defender's latest plans. This had been sent

from his Braemore Estate email. It is the only business email he uses. The Tomatin Trading

Company name "was not commented on" at the meeting. He described the general reaction

to the Development as "very positive". He did not believe he would have introduced

himself as "being from Braemore Estates" (as Mr Bremner suggested). He had discussed

what he was looking to do with the Development and also the pursuer's business. On the

latter subject, he recalled Mr Bremner describing the pursuer's plans to penetrate the US

whisky market and to do so by being "cheaper than any other brand". Mr Frame thought

this was an odd thing to say in respect of a premium whisky. Mr Frame recalled stating that

he was keen to sell whisky on the Site and would be pleased to sell the purser's product. No

mention was made of any plans by the pursuer to provide goods or services falling within

the classes for which the 2018 Marks were registered. He did not state positively that he had

handed over a business card at that time, but said it was his habit to hand over a Tomatin

Trading Company business card at such meetings. Mr Frame also noted some eleven press

articles, dated 21 and 22 March 2018, mentioning the Development (eg two in each of the

Scottish Business News Network and Aberdeen Press and Journal, two in The National and

one each in The Scotsman and The Times (Scotland)).

Mr Frame's views of the pursuer's 2018 Marks

[186]

He first became aware of the 2018 Marks when he received a letter in February 2019

from the pursuer's agents following the defender's submission of the Application (in

mid-January 2019). He described himself on friendly terms with Mr Anderson and with

105

Tom McCulloch (Mr Anderson's predecessor as the pursuer's managing director). "It was

only later, when Stephen Bremner came along that there was any problem". Had he known

there would have been an issue with the defender's Sign, he would have applied much

sooner. It was his belief that the 2018 Marks had been registered in bad faith and it was

"devious and underhand". He did not believe there was any dedicated hospitality for food

and drink. It was his intention only to use the defender's full name, "Tomatin Trading

Company", and not "Tomatin" on its own. He gave hearsay evidence that he had "spoken

with a significant number of locals and other individuals" and it was "very clear that there

was no confusion" between the Distillery and the proposed Development under the name

Tomatin Trading Company.

[187]

Most of Mr Frame's supplementary statement was comprised of responses to

Mr Bremner's evidence on chapters of evidence not relevant to the core issues in these

proceedings. (He also responded to essentially the same points also made by Mr Anderson

and Mr Eunson.) He believed that a marketing budget of £10,800 for a business with a

turnover of over £1 million as "a very low sum". He was critical of Mr Bremner's table of

figures showing what has been paid to distributors in order to promote the pursuer as very

vague. In respect of the defender's Figurative Sign, the "TT" design was intended to

represent a trading post. The defender had amended the Application to remove class 33

(whisky) as a gesture of good will. It had also removed the picture of the jam pot which the

pursuer had objected to from its website. While Mr Bremner believed that the defender's

mention on its website of having a world renowned whisky brand "right on our doorstep"

caused confusion, Mr Frame believed that this made it clear that the pursuer was not part of

the defender's business. The reason why the "Juniper Village" signage for the Development

106

had not been changed was due to cost. Any business card handed over at the meeting

would have had Braemore Estates on one side and Tomatin Trading Company on the other.

[188]

In respect of Mr Anderson's comments that the defender's plans were a House of

Bruar-type offering, Mr Frame explained that while there were some similarities, the House

of Bruar was mostly a textile offering with a café and open from 10:00am to 4:00pm. The

Development would be quite different, as it was to be principally a hospitality offering, with

a hotel and eatery open for much longer hours (7:00am to 10:00pm).

Cross-examination of Mr Frame

[189]

As noted above, many chapters of Mr Frame's evidence were irrelevant to the central

issues in this case. The same holds true for the cross-examination of him on these chapters.

The evidence elicited in the cross-examination of Mr Frame and relevant to the central issues

in this case was as follows.

[190]

In relation to the name "Juniper Village" for the Development, a number of

documents were put to him in order to challenge his statement that this had been used only

at the initial stages. These materials included the signage at the Development, the CADISPA

Trust "Strathdearn Community Planning Study 2011" ("the CADISPA Study") (which

referenced a conversation with Mr Frame of Braemore Estates about his plans for "the

Juniper Village development"), the MKA Report (dated January 2018) which referred to the

Development as "Juniper Village". Mr Frame explained that it was expensive to change the

signage. He could not recall the conversation with the author of the CADISPA Study and

the authors of the MKA Report had taken it upon themselves to use the name. He

ultimately accepted the "Juniper Village" name had been used for a longer period than

stated in his witness statement. He accepted that in the MKA Report it was suggested that

107

Braemore Estates were the developers for the Development and that the Distillery had been

described as "renowned". In respect of the latter, Mr Frame's rueful answer was that

"hindsight was a great thing". He also accepted that he had continued to use "Braemore

Estate" as the name of the developer in the 2012 extension of the 2017 planning permission

and in the pursuer's business plan and prospectus for the Development. He was pressed

(under seven or eight individual passages from these documents) that in none of these was

there a reference to "Tomatin Trading Company". Mr Frame accepted thatat that time the

public face of the Development was Braemore Estates, which was he name of his principal

business

[191]

Mr Frame was questioned under reference to an article in The National newspaper

dated 22 March 2018 (which was part of the media coverage in mid-March 2018) that the

emphasis there had been the Development's proximity to the A9 and the junction, not

Tomatin village. His reply was that he was not the author of the article. Under reference to

observations in the CADISPA Study (to the effect that there was nothing in the village of

Tomatin to draw tourists or to make it a destination in its own right) and the MKA Report

(that the tourism economy in the area was underperforming) he was pressed to accept that

there was nothing at the moment to draw tourists. Mr Frame's position was that these

observations pre-dated the new café and business centre in the village.

[192]

Mr Lake next sought to challenge as untrue a number of entries from the defender's

brochure for the Development (eg about the convenience of Tomatin as a stopping point for

travellers or its proximity to the start of the North Coast 500). Mr Frame maintained that

Tomatin village was well-known to hillwalkers, mountain bikers and people who fished.

There was a lot to do there. The start of the North Coast 500 was only 15 miles away.

Mr Frame maintained that Tomatin would be well known to anyone who travelled along the

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A9. He accepted that one could not see the village from that road and that, since the A9

bypassed the village 40 years ago, there was no need to go into the village. Mr Frame also

maintained that the Strathdearn Centre (containing a community hall, café, sports facility,

shop and toilets) was a draw for tourists.

[193]

Mr Lake put a number of entries from the defender's Business Plan to Mr Frame

about the Development's target customer, with the proposition that there was no reference

to attracting holiday makers. Mr Frame explained that this was a general document; the

primary target was traffic on the very busy A9 (traffic numbers in August 2018

exceeded 13,500 vehicles daily), whether this was tourist, business or local traffic; and the

secondary audience was the destination consumer and the "silver pound".

[194]

Mr Lake next put the entries from the 2007 planning application and its design

statement to Mr Frame, which referred to the (then) desire for the Development to be

reminiscent of a "village square or a steading or a distillery" together with other similar

passages. Mr Frame's answer was that the visuals of the Development had changed since

then. Mr Frame accepted that the comment from the defender's Business Plan (and a near-

identical comment from its website), describing "world renowned whisky brands with one

right on our doorstep" was a reference to the Distillery. He accepted that the description of

the defender's Distillery as "world famous" elsewhere in the Business Plan was an

exaggeration. In relation to the retail offer at the Development, this was rendered uncertain

by the Covid pandemic and the defender would operate the retail units if tenants could not

be found.

[195]

Under reference to the marketing strategy in the Business Plan, which referred both

to the "Tomatin Trading Company" and the "Tomatin Distillery", and which described the

defender as "looking to harness any partner marketing activity with Tomatin Distillery, and

109

other tourist attractions such as Aviemore", Mr Frame was challenged that the defender was

seeking to rely on or take advantage of the pursuer's name. Mr Frame explained that he was

just trying to cooperate with neighbouring businesses. Nothing had come of any proposed

tie up with the pursuer. He rejected the proposition that the defender was seeking to

associate itself with the Distillery in order to enhance its own reputation. He was pressed on

this: the defender's brochure had sought to rely on the Development's pr oximity to the

Distillery as a means to distinguish it from the House of Bruar. Mr Frame acknowledged

this statement, but it was simply stating the facts. The Distillery was near the Development.

[196]

The email exchanges preceding the February 2018 meeting were put. The purpose of

the meeting was to discuss the defender's plans for the Development. Mr Frame accepted

that, but not the contention that there had been no discussion of the pursuer's plans for the

Distillery. It was a polite meeting to discuss both businesses. Mr Frame wished to inform

the pursuer of what was happening at the Site. Mr Frame maintained that Mr Bremner had

mentioned the pursuer's intention to reduce numbers at the Visitor Centre (which was

uncontroversial) as well as the fact that the pursuer had mentioned it had no plans to

develop the Visitor Centre. Mr Frame was questioned under reference to the statement in

his email after the February 2018 meeting: "I believe it would be a great opportunity for The

Tomatin Distillery Company to be involved with our whisky, merchandising experience."

He explained that while it had then been the intention to include a whisky-tasting

experience, that was no longer the defender's intention.

[197]

The factual dispute of whether Mr Frame had handed over a business card to

Mr Bremner and Mr Anderson at the February 2018 meeting, or one containing the words

"Tomatin Trading Company", was explored. The version of the business card produced as a

copy of the one handed over at the February 2018 meeting was examined. The reverse of

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that had the words "Tomatin Trading Company" printed over a 3-D image of the

Development. Under reference to the Business Plan and some of the materials in support of

the 2018 planning application, Mr Lake developed the proposition that the image on the

card produced did not reflect the layout of the Development at that time (and, by

implication, post-dated the February 2018 meeting). Mr Frame could offer no comment,

other than to fall back on his earlier answer about hindsight.

[198]

The proposed finishings for the Development were noted (eg dark grey roof made of

corrugated material, a mostly single-story presentation, the use of some wood and some

white exteriors, crow-step gables and chimneys, a stone frontage), as were some photos of

other distilleries said to be representative of the idiom of that kind of building (eg also low

buildings with pitched roofs and using stone or white render); and the proposition was

developed that this all reflected the original approach (in the 2007 planning application)

with the intention of creating a resemblance with the Distillery. Mr Frame rejected that

proposition. These kinds of building materials were used throughout the Highlands and

simply reflected the vernacular architecture.

[199]

The different features of the Development were explored. Mr Frame accepted that it

would be visible from the A9. He was challenged that the business of a hotelier was not the

same as a trading company. Mr Frame explained that the Development encompassed a

large number of uses. The whole idea of "Tomatin Trading Company" was that it was like a

trading post. He acknowledged that neither a hotel nor a restaurant was itself a trading

post, but the whole ethos was that it was a place to stop. People would engage in trade in

the sense that they would buy things, or petrol or services. He did not accept that this was

artificial or highly contrived. It was a business name. The defender would be a trading

business. He did not accept that "Tomatin" was unknown as a place name and that it was

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no part of the attractive force of the Development that it was near Tomatin village. He

accepted that the principal attraction of the Site was that it was near the A9; that the signage

for the Development would be visible from the A9 and that it was the defender's intention

to use its name on it. It was absolutely not the case that the defender wanted to be close to

or associated with the pursuer's established business. He also accepted (under reference to

photographs, the Inquiry Report and an Ordinance Survey map) that a traveller coming off

the A9 would see the Development first. He pointed out that the road signs mentioned the

Distillery. He rejected the proposition that it made sense instead to use "Strathdearn" or

"Highland" as the place name; Strathdearn was not well-known and "Highland" was

ubiquitous. While the name "Tomatin Trading Company" was only one word different

from "Tomatin Distillery Company", Mr Frame maintained that the defender had no

intention to associate itself with the pursuer's business. The pursuer did not have a

monopoly on the use of Tomatin, which was a place name, and which had been used in the

past by many other businesses.

[200]

Mr Frame was challenged on his statements that the pursuer was acting in bad faith

when it registered the 2018 Marks. He still believed the pursuer had registered these as a

spoiling tactic. The Tomatin Trading Company name was important to his business and it

reflected the location of the Development. He accepted he had no knowledge of the terms of

any advice the pursuer had obtained for the purpose of registering the 2018 Marks. He also

accepted he had not named any of the persons whom he had quoted in his own witness

statement asserting that they would not be confused about the Development and the

Distillery.

[201]

In re-examination, Mr Frame explained that he described the geographical location of

the Development as within the curtilage of the village and next to the A9. Tomatin as an

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area was wider than just the village; the village was spread out in the form of a ribbon

development. Once the Development was built, the signage would state the name of the

defender and the services on offer. It would not include the word "distillery". If the A9

were dualled, the manner in which one reached the Development would change. The on/off

ramps would be further south, with the effect that a traveller coming off the A9 would reach

the Distillery first, not the Development. While he had used the name Braemore Estates in

certain documentation in 2018, the name used for the Development in the mid-March media

coverage had all referred to Tomatin Trading Company. While there had been a jam pot

with the word "Tomatin" on the defender's website, th is had been taken down in

March 2019 as soon as the pursuer's agents had objected. It was for this reason that the 2020

business plan had not referenced the Distillery by name, but simply referred to the one

"right on our doorstep". He contrasted the features of the Development with the House of

Bruar; the latter was essentially a clothing operation with a self-service restaurant, whereas

the Development had a very different retail offering and an ambition to showcase the best of

Highland food and artisanal products. It also would have a hotel and electric charging

points for cars. The point of difference would be in the emphasis on its food offering and

the fact that there was no competition in the immediate vicinity.

Mr Bath

[202]

Simon Bath, who has been employed as a hospitality consultant to the defender since

May 2020, has had a varied career. His most relevant experience was as the general

manager of Carnegie Club at Skibo Castle for 12 years in the early 2000s. He stated that his

knowledge and familiarity with "the area around Tomatin, the village and the wider

Highland diaspora is extensive". In large measure Mr Bath's evidence duplicated that of

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other witnesses (eg about the history and use of Tomatin as a place name, the nature of the

pursuer's business, the pursuer's Application) or it was not evidence of matters within his

direct knowledge (the pursuer's awareness of the Development or its motives in obtaining

the 2018 Marks, whether others might or might not confuse the Development with the

Distillery). So for example, great passages of his statements simply echoed the evidence of

Mr Frame (eg the passages beginning "From my many discussions with Mr Frame...", or

"Mr Frame's initial impression after the February 2018 meeting...") or the terms of the

defender's documents Mr Frame had already spoken to. Other passages trespassed on

matters which are for the court (the issues of trade mark infringement, the likelihood of

confusion, passing off, the invalidity of the 2018 Marks, the extent the pursuer has any

goodwill). The pursuer objected to many of these passages in its Note of Objections. I

uphold all of those objections. I therefore do not record these chapters of his evidence, or

the cross-examination of the same. Cross-examination confirmed that he had no direct

knowledge of many of the matters in his witness statements; that he was essentially

dependent on the documentation produced by the defender and was unable usefully to

comment on much of it because it pre-dated his involvement with the defender.

[203]

Mr Bath's relevant evidence was limited to the following:

Having visited the Visitor Centre, he did not believe it was credible as a retail

experience;

Having reviewed the pursuer's marketing strategies for 2017 to 2019, he

noted that these focused on the pursuer's global marketing and he did not note any

"particularly highly intensive marketing strategy". He believed the figure of £10,800

spent on marketing the Visitor Centre was "an extremely low figure";

114

There have been a number of other businesses in Tomatin over the years,

including the Strathdearn Community Centre, and he believed that the Distillery was

not the only draw of visitors to the area. He mentioned a dozen or so shooting

estates;

In cross-examination he was challenged on the defender's use of "Trading

Company", but he explained that those words summed up well the broad offering at

the Development. It made the visitor experience more engaging, a bit like the Tebay

station near Penrith, and it helped the defender communicate the whole concept and

distinguish it from others, such as the House of Bruar; and

In re-examination he confirmed that to the best of his knowledge and belief

the defender was not supplying any goods or services as at spring 2021.

Mr Lederer

[204]

Peter Lederer had extensive experience in the hospitality and drinks industry. Prior

to his retirement in 2014, he had been the managing director of Gleneagles, a former

chairman of Diageo and, more recently, he had been chairman of Visit Scotland (from 2001

to 2010), the Saltire Foundation and he was a past president of The Institute of Hospitality.

He knew the pursuer operated the Distillery and Visitor Centre near Tomatin but he had not

visited these. He explained that Diageo, whom he described as Scotland's largest exporter

of Scotch whisky and other spirits, owned a number of Scotch whisky distilleries (including

Dalwhinnie, Oban, Talisker among others). Since 2012 Diageo had committed some

£150 million to upgrade 15 of their distilleries' visitor centres. While he acknowledged that

the pursuer operated the same business model of using a visitor centre, he described

Tomatin and Macallan as at different ends of the scale in relation to each other. From his

115

experience with Diageo, he opined that the Distillery was not known for anything other than

single malt whisky. It "did not have a reputation in the UK for any other goods or services

such as hotels or food and drink". It was not uncommon for distilleries to derive their name

from the local area or to share their name with other business local to them. He provided

five examples where this was so and the business "living side by side" and complemen ting

each other. From his knowledge and experience, "neither Tomatin village nor Tomatin

distillery are known on a global basis". In respect of the pursuer,

"I would say that Tomatin is not a big player in the Scotch whisky market. It is really

a very minor player. In Scotland, without giving them any context, I think you

would be struggling to finds people who know what "Tomatin" is. In my opinion,

only consumers with specialist knowledge would know Tomatin Scotch whisky.

Certainly, if you asked an average consumer to name 20 Scotch whiskies, I would

doubt Tomatin would be one of them".

He explained in his parole evidence that those comments were from the perspective of the

consumer; he was not saying the pursuer's product was not good; he did not know their

product. He believed that the Distillery and the Development are mutually advantageous.

In his experience, "the consumer does not care who owns what business. They are

concerned with the quality of service and experience". He provided an example from his

days at Gleneagles Hotel of a dispute with the Gleneagles Estate, which had objected to the

former's use of "Gleneagles". He explained that Gleneagles was also a village and a

geographical name. The estate could not object so long as the hotel used the full name

"Gleneagles Hotel". He deprecated the dispute between the parties as damaging and

counterproductive. In cross-examination, which was brief, he confirmed the nature of his

experience with Diageo and Gleneagles Hotel. He accepted "absolutely" that a distillery

visitor centre may be very important to the local area.

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Mr Macleod

[205]

George Macleod lives at Melfort House near Tomatin and from which he runs the

family businesses. He is also a director or trustee of several organisations in the area (eg

Strathdearn Community Developments and the Inverness Harbour Trust). His evidence

about the area Freeburn Inn confirmed that of the parties' experts. He confirmed that the

local area is called "Strathdearn"; that the main village is called Tomatin and has many local

amenities, including the new Strathdearn Community Centre as well as the local school. He

noted the terms of the CADISPA Report and its reference to Tomatin. He also confirmed

that Tomatin was known for a number of other things apart from the Distillery, including

tourism and sports tourism (fishing, deer stalking and grouse shooting) and that there were

many estates in the area. He had purchased the Tomatin Inn in 2007, a 200-seat restaurant,

and had renamed it as the "Tomatin Country Inn". He had never had any complaints from

the Distillery about its use of Tomatin. While that business had since closed, he believed the

Inn and the Distillery supported each other in business terms. The Inn had hosted Distillery

events. He had also run the Tomatin Country Store (the renamed Tomatin Shop, now the

site of the Strathdearn Community Centre) and from which he had sold products from the

Distillery. He named a number of other local businesses that used the name Tomatin. The

points taken from him in cross-examination were the use of "Strathdearn" in relation to

certain amenities, that the village had been bypassed by the A9 in the 1980s, and that the

Freeburn Hotel and the Little Chef at the junction had been the real stopping points for

passing traffic.

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Mr Usborne, Mr McGowan and Lord Macpherson

[206]

The parties agreed that the statements of three of the defender's witnesses

(John McGowan, Edward Usborne and Lord Macpherson) would be accepted as their

evidence in chief without the need for cross-examination, but subject to the objections stated

in the pursuer's Note of Objections.

Mr McGowan

[207]

John McGowan is the operations director of a private inquiry agency, called ID

Investigations Limited, and the author of the Inquiry Report (summarised above, at

paras [67] to [69]). Prior to that role he had been a senior inspector with the Federation

Against Copyright Theft and a superintendent with Scottish Police (including with CID).

He had 20 years' experience in investigating and reporting on brand protection matters. He

carried out an investigation into the pursuer in the form of a review of its website, a visit to

the Visitor Centre and taking a Distillery tour. He adopted the Inquiry Report. As noted

above, his evidence was agreed.

Mr Usborne

[208]

Edward Usborne, who has lived in Tomatin for more than 20 years, was Vice-

Chairman of the Strathdearn Community Council for around 10 years (from 2009 to 2019).

He is also a partner running the Tomatin Estate as a holiday venue since 2001. From his

position on the Community Council, a statutory consultee of planning applications, he was

aware of the defender's planning applications (from 2007 onwards) and that the village

supported the Development. He described the Strathdearn area as quite spread out and that

Tomatin village has the largest collection of houses within that area. He noted that other

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local businesses in the past had incorporated "Tomatin" into their business name. He

described the Site as a "prime location" just off the A9. He believed that the Development

will raise the profile of Tomatin and benefit the business of the Distillery, as it would attract

more visitors, although he understood that the Distillery did not want more visitors.

Lord Macpherson

[209]

Lord Macpherson, who resides at Ardachy House near Tomatin, has lived in

Tomatin all his life and worked in the local community. He is a former Vice-Chairman of

Strathdearn Community Developments and is a trustee of the Strathdearn Community

Trust. He runs the business known as "Tomatin Firewood" since 2011 from the family farm.

He was aware of the proposed Development from early on, though he could not recall the

name used in association with it, and regarded the design as tasteful. In common with

Mr Usborne, he also confirmed that Tomatin is the heart of the Strathdearn area. Tomatin

was a traditional Highland village and was known for the Distillery and for Tomatin Estate.

He believed that the village of Tomatin existed long before the Distillery. He believed the

Site was a great location for the Development.

The experts' evidence on reputation/ brand awareness of Tomatin and who is the average

consumer

[210]

The parties' experts each spoke to the pursuer's place and reputation in the whisky

sector, who was the average consumer of the pursuer's Tomatin-branded product, and

awareness of the pursuer's brand.

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Mr MacLean

The pursuer's reputation

[211]

In relation to the reputation of the Marks, in his principal report Mr MacLean stated

that:

"[Before the distillery was built, the name 'Tomatin' will have been known only

locally, and to a few sporting tenants on the Tomatin Estate.]

[...]

Between 1897 and 1963 [the Distillery] will have been known by the whisky trade. I

should mention that the distillery manager after 1964, John MacDonald, was one of

the best-known characters in the entire Scotch whisky industry.

When the whisky began to be released as a single malt, branded `Tomatin Highland

Malt Whisky', the name will have become familiar to consumers, especially since

1974 when the distillery was recognised as having the `largest capacity of any malt

distillery'.

TDC ["TDC "is Mr MacLean's abbreviation for the pursuer] began to release annual

bottlings at different ages and finishes in 2004. Since then, its whiskies have won

many awards, and TDC was voted `Distiller of the Year' in 2016 and `Innovator of

the Year' in 2017 in the prestigious Icons of Whisky Awards. It states in the

Summons (p.7) that the brand is now the 25th best-selling malt globally.

Accordingly, it is safe to assume that the 'Tomatin' word mark is now universally

known and respected by whisky enthusiasts, worldwide.

It goes without saying that considerable goodwill - even celebrity - attaches to the

brand name, and there is no doubt in my mind that any goods and services bearing

the name will be assumed to have been originated by TDC. Worse, the use of the

`Tomatin' name by Tomatin Trading Company could do untold damage to TDC's

business and reputation (see below), and at the very least lead to confusion."

(Emphasis added.)

The first and third passages in bold font are repeated as his conclusions. The defender

challenges all of the statements highlighted.

[212]

Mr MacLean also addressed the issue of brand awareness in his supplementary

report. It is not necessary to rehearse his observations on the pre-2012 sales of the pursuer's

Tomatin-branded whisky, other than to note his conclusion (at the end of section 6) that:

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"The very fact that Tomatin single malt is mentioned in these guides from the 1980s

and 1990s indicates that the brand was known to whisky enthusiasts." (Emphasis

added.)

In a later section he addresses the issue of brand awareness in more detail:

"At 9.01 of his report, Mr Russell questions my claim thatTomatin is now `well

known', asking `...to whom and how many? The Tomatin name is known to single

malt Scotch whisky aficionados'. But it is precisely such `aficionados' who are the

key customers for the brand, and for Scotch malt whisky generally, worldwide. It is

impossible to quantify numbers, suffice it to say there are now hundreds of clubs

dedicated to malt whisky around the world and large-scale whisky fairs attracting

many thousands of enthusiasts in very many countries.

Evidence for Tomatin to be well known internationally may be found in production

(6/155 spreadsheet) which shows that, in terms of market share, Tomatin ranked

4th in Israel, 7th in Japan, 7th in Russia, 15th in Germany and 17th in the USA. These

rankings have also been highlighted in Article (Paragraph) 3 of Condescendence in

the pursuer's Summons.

Mr Russell also notes (paragraph 9.02) that new releases from Tomatin are not

mentioned in the Malt Whisky Yearbook 2021. This is purely on account of limited

space. In earlier annual editions (2006-2012) Ingvar Ronde listed `New Bottlings', but

in the 2012 edition he opens this section by writing: `It is virtually impossible to list

all new bottlings during a year, there are simply too many...In this list we have

selected 500 that were released from late 2010 until autumn 2011'. The section on

`New Bottlings' was subsequently abandoned, with a selection being included in his

summary of `The Year That Was'.

In regard to Mr Russell's comment (paragraph 11.05), I agree that `smaller brands'

might not necessarily register trade-marks for their non-whisky goods and services,

but some have done see Graham Eunson's witness statement re Bowmore Darkest

(in Class 43) and Morrison Distillers for their Clydeside Distillery (in classes 25, 41

and 43). Further, some of these `smaller brands' will and have interdicted the

mention of their brand-name when bottled independently Glenfarclas is the

leading example, where its chairman, John Grant, has frequently raised and won

actions to prevent others using his brand-name." (Emphasis added.)

He also responded to a passage in Mr Russell's report, as follows:

"I agree that Tomatin is a respected single malt and relatively small, though

increasingly known, player in the malt whisky market. But to compare the brand's

success in the UK market with the leading whisky brands in this market The

Famous Grouse, Bells and Glenfiddich is absurd; the first two are blends and

Glenfiddich is the best-selling Scotch malt whisky in the world".

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Mr MacLean's cross-examination

[213]

Mr MacLean adopted his reports as his evidence in chief. Accordingly, the majority

of his parole evidence was comprised of cross-examination by Mr Tariq, who appeared for

the defender. Mr MacLean readily accepted and assented to the following propositions:

That in his statement that, from the Distillery's release of a single malt

branded "'Tomatin Highland Malt Whisky' the name will have become familiar to

consumers, especially since 1974", the "consumer" he was referring to was the single

malt whisky aficionado. He acknowledged that the single malt whisky market only

took off in the 1980s and that this brand was probably only available in the north of

Scotland and it would have been familiar to local consumers. To the extent that the

Tomatin Distillery was known at that time, it was because of its size in terms of

production of whisky for blending, not for its branded single malt whisky;

That in the 1970s, before single malt whiskies became popular, they would

have been "virtually unknown" in the UK and that even by 1981 less than 1% of malt

whisky produced was released as a single malt whisky in the UK. Single malt

whisky was a tiny fraction of the UK market going back to the 1980s. The vast

majority of whisky produced was sold in bulk for blending. Single malt whisky

comprised only about 10% by volume of the current share of the market in Scotch

whisky sold in the UK;

That his statement that Tomatin "is now `well-known', if not a household

name" was not based on any market research, but was a matter of supposition

because of coverage it has had in books and magazines. Further questions revealed

that Mr MacLean was referring to entries ranking it in terms of quality. He also

accepted that the class of person to whom it would be "well-known" was the "single

122

malt whisky aficionado" and the specialist retailer. He was not referring to the

general public who purchased blended Scotch whisky. The single malt whisky

aficionado was a relatively small segment of the Scotch-buying market. He accepted

that the Tomatin brand was not well-known to the general buying public who buy

Scotch whisky;

In terms of who was the typical consumer of Tomatin-branded single malt

whisky, this was the single malt whisky aficionado or a single malt whisky drinker

who wished to become more knowledgeable. He explained that single malt whisky

drinkers were pluralists; they tended not to be loyal to a brand but liked to explore

and to feel that they make their own discoveries. For that reason, the conventional

wisdom in the industry was that advertising spend by producers was unlikely to be

effective and, by inference, could even be counterproductive (because if it was

well-known or widely advertised it was not there to be "discovered");

Mr MacLean readily accepted that his statements, "that the `Tomatin' word

mark is universally known and respected by whisky enthusiasts, worldwide" and

that it had "considerable goodwill - even celebrity", were also made without research

but were simply assumptions he made. He readily accepted that it was an

overstatement to speak of "celebrity";

Under reference to the Global sales figures, which put Tomatin single malt

whisky at 0.6% of the global market, he accepted that there were several huge global

brands, which had been early movers into this market and who still retained their

advantage. He appeared slightly disappointed to note that in the UK, Tomatin had

only 0.3% of the UK market share and was ranked 39th of all producers of single malt

whiskies. He accepted, in light of those figures, that Tomatin was not well-known

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among the general whisky-drinking public in the UK. There may be many brands

that are well-known to the general public who might buy Scotch malt whisky in the

UK, but Tomatin was not a leading brand by any means;

It was "absurd" to compare Tomatin's success as a single malt whisky with

the leading whisky brands in this market;

That one of the reasons why Tomatin was not well known to the general

public who buys Scotch is because, unlike the big brands, it is not heavily promoted.

This was because the single malt whisky aficionado liked to make their own

discovery and that, unless a major brand was competing for a place in a

supermarket, it was a "waste of money" to do straightforward advertising;

He stood by his statement that "any goods and services bearing the name [of

Tomatin] will be assumed to have been originated by" the pursuer. He posited that

visitors to the Development would be likely to assume it was part of the Distillery

and he did not understand why the defender was so keen to use the "Tomatin

Trading Company" name. In his view, it implied that the Development was an

extension of the Distillery. He thought there was a bit of "piggy-backing" by the

defender, as a lot of people will have heard of the Tomatin Distillery and no one will

have heard of Tomatin village.

No evidence of any materiality was elicited in re-examination.

Mr Russell's evidence

[214]

Like Mr MacLean, Mr Russell prepared a principal and a supplementary report, the

latter prepared after having seen Mr MacLean's principal report. He adopted these as his

evidence in chief.

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[215]

Mr Russell's remit was similar to Mr MacLean's. This was: to consider

Mr MacLean's report and the following questions:

"1)

Where is Tomatin whisky sold? What is the usual purchasing process (is it

mostly online)? How many visitors are likely to be attracted to the Distillery each

year? Is its current business offering (a website and small visitor centre) consistent

with other distilleries?

Tomatin Distillery's place in the wider market for Scotch whisky for

example, is it a big player? What is it known for? Where does it rank as a Scotch

whisky brand in the UK?

Is Tomatin Distillery known for anything other than single malt Scotch

whisky? Does it have a reputation in the UK for any of the goods/services for which

the 2018 trade marks are registered?

Is it common for distilleries to offer the goods / services for which the 2018

trade marks are registered? How many other distilleries have pursued the same

strategy of registering trade marks for a wide array of goods and services? Do those

distilleries differ from Tomatin Distillery?

Is [the defender's] proposed development the type of business normally

associated with distilleries?

Is [the defender's] proposed development likely to have an impact on

Tomatin Distillery's reputation and business? Is it likely to be a positive impact if it

draws visitors to the area?"

Mr Russell's evidence on Tomatin's reputation and brand awareness

[216]

Mr Russell produced a first report and a supplementary report responding to

Mr MacLean's first report. In common with Mr MacLean, he divided his consideration of

the pursuer's sales, reputation and advertising into the periods before and since 2012.

Tomatin`s branded sales and reputation pre-2012

[217]

After the Second World War the Distillery's production was gradually increased

until it had the largest production capacity in Scotland. Throughout the 1980s and 1990s the

greater part of its output was sold to other companies. It used some of its product in its own

125

blended Scotch (eg "Big T"). However, Tomatin as a single malt whisky was not widely

available at this time. Tomatin was bottled and sold as a single malt Scotch whisky in

relatively small quantities under the brand name before 2012. It was best known not for a

brand of single malt Scotch whisky, but as a large distillery which produced single malt

Scotch whisky for bulk sales and for blending with other whiskies, to be sold under different

brand names. In his view, Mr MacLean's statement that Tomatin was sold as a branded

single malt in 35 countries by 1983 is based on a misreading of the source relied on

(Philip Morrice). Correctly understood, Mr Morrice was referring to the entire range of

products sold by the pursuer's predecessors (Tomatin Distillers PLC) and of which

Tomatin-branded single malt was "only a very small amount". At that time, the Distillery

was primarily a supplier of bulk stocks and blended products. It bottled only a limited

quantity of single malt whiskies under the Tomatin name. This was borne out by the

paucity of references to Tomatin in rare whisky guides and auction data. Nor was the

Tomatin single malt whisky highly-rated as a single malt in the 1990s and early 2000s. In

support of this, reference was made to a book by the pursuer's expert and to a volume

regarded as one of the best-selling guides to Scotch whiskies.

Tomatin`s branded sales and promotion since 2012

[218]

Mr Russell noted that in recent years there has been a great expansion of the Tomatin

range of core expressions and limited editions, and more enthusiastic reviews. While sales

have increased in some markets, they remained "relatively modest, in the UK and globally"

in comparison to the leading Scotch whisky brands. He concluded that as of 2021 "Tomatin

is not a brand that is well-known to the majority of whisky drinkers in the UK". In seeking

126

to explain why that is the case, Mr Russell considered the pursuer's sales channels and

advertising and promotion activities.

[219]

In respect of its sales channels, Mr Russell had reviewed the statements of the

pursuer's witnesses who spoke to the pursuer's marketing and sales strategy, namely

Mr Bremner and Ms Masson. From these he noted that the pursuer's strategy in the UK

appeared to have been to concentrate on building brand awareness and pushing sales to

whisky connoisseurs through specialist retail outlets and e-commerce channels, before

developing sales in mass retail outlets (such as supermarkets). This was a proven strategy

for developing recognition among single malt whisky aficionados and achieving higher

values of sales (rather than higher-volume but lower-margin sales). However, single malt

whisky aficionados are "a small minority" of Scotch whisky drinkers. Mr Russell accessed

the pursuer's website in December 2020 and noted that the Tomatin brand was sold in the

UK principally through specialist whisky shops (such as Robertson's of Pitlochry and The

Whisky Exchange, and in some bars), as well as some online retail businesses. It sold an

exclusive range on some airports. He noted that the Visitor Centre was a significant outlet

for Tomatin's sales in the UK.

[220]

While it is generally accepted in the whisky industry that greater brand awareness

and recognition can be achieved by using mass outlets, such as supermarkets and duty-free

outlets at airports, the pursuer had not made wide-spread use of these outlets. Mr Bremner

had acknowledged that the availability of Tomatin single malt whisky for sale in Tesco

stores in Scotland was limited. Mr Russell's own search of the Tesco website in

mid-January 2021 for Tomatin produced a nil return. A search of the pursuer's own website

did not list any airport or travel retail outlets.

127

[221]

From all of this, Mr Russell concluded that the pursuer's marketing efforts had

"focused quite tightly on two groups within the niche of single malt Scotch whisky sub-

category single malt explorers and single malt aficionados who form an enthusiastic but

relatively small cohort of Scotch whisky drinkers".

[222]

In respect of advertising and promotion, these are key to achieving sales. From his

experience in the industry, it can be a challenge successfully to promote brand awareness in

what is a "crowded market". He had found no evidence that the pursuer had used any of

the standard methods of attracting attention (eg by a celebrity tie-up, high profile

sponsorship deals or television, print or other media advertising) to promote brand

awareness in the UK, to any extent beyond the north of Scotland.

The pursuer's ranking and reputation

[223]

Mr Russell also considered the UK and Global tables ranking brands according to the

volume of sales of single malt whisky. Globally, this is a crowded market. By comparison

with Tomatin's ranking as the 25th best-selling single malt whisky brand (with a sales of

67,800 9L cases in 2019), the market leaders (such as Glenfiddich and Glenlivet) sold 1.4 and

1.2 million cases. That volume was itself dwarfed by the sale of blended Scotch; Johnnie

Walker, for example, sold 19 million cases in 2018. Moreover, there are other types of

whiskies which are not Scotch. Irish, American, Canadian and Japanese whiskies all

compete with Scotch whisky for global sales. Jack Daniels achieved sales of 13.4 million

cases in 2018.

[224]

The table of UK sales was more relevant to the issue of the pursuer's sales and

reputation in the UK. On this data, Tomatin was ranked 39th in sales of single malt whisky

with sales of 3,000 cases in 2019. By contrast, on the figures the pursuer provided, the

128

market leaders sold exponentially more than Tomatin: Glenfiddich sold nearly 95,000 cases

(32 times as many as the pursuer) and Laphroaig sold more than 75,000 cases (or 25 times

the volume of the pursuer). He concluded that "Tomatin is clearly far from being one of the

well-known brands in this sub-category of Scotch whisky" assessed in terms of sales.

Moreover, not only was Tomatin "a small brand within the single malt whisky sub-category,

it was dwarfed by sales of the leading brands of blended Scotch whisky in the UK". In 2018,

for example, Famous Grouse, the market leader (with 25.72% of the UK market), sold

1.622 million cases.

[225]

He concluded that from the evidence of Scotch whisky sales in recent years, Tomatin

remains "a relatively small player in both export and UK Scotch whisky markets, and an

even smaller player in the market for all types of whisky." He did not question the quality

of the product, and therefore assumed that sales reflected "low brand awareness/recognition

among Scotch whisky drinkers."

"Tomatin was bottled and sold as a single malt Scotch whisky in relatively small

quantities under the brand name before 2012. It was best known not for a brand of

single malt Scotch whisky, but as a large distillery which produced single malt

Scotch whisky for bulk sales and for blending with other whiskies, to be sold under

different brand names."

[226]

While acknowledging that the pursuer has a strategy for growth which focusses on

increasing brand awareness within a segment of a Scotch whisky-buying consumers, in his

opinion Mr MacLean's assertion that Tomatin is "well-known" required to be "strongly

qualified". In Mr Russell's view, Tomatin was known to single malt whisky aficionados, a

segment he characterised as a growing but "still very small segment" of the whisky-buying

public in the UK. He considered the brand's sales to be "diminutive when considered

within the category of Scotch whisky", which he characterised as "a crowded market which

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includes hundreds of brands and a great number that are better known to whisky drinkers

in the UK". He demonstrated this by reference to the "Malt Whisky Yearbook 2021", a

highly-regarded guide. This volume lists single malt whisky expressions from Scotland's

distilleries, from the most famous to the least. The reader may search for a specific name by

alphabetically-listed entries. In a separate section on new releases in 2020, there was no

mention of any Tomatin product, notwithstanding that the pursuer had launched a Tomatin

Fino Sherry Cask Finish and a Tomatin 21 year-old expression for the travel retail sector. He

regarded it as "significant" that the author of the Malt Whisky Yearbook 2021 did not bring

the Tomatin brand or any of its new products to the attention of readers. By comparison, he

noted that there were ample references to lesser-known and more recently established

distilleries. He surmised that it was unlikely that the Malt Whisky Yearbook 2021, an annual

publication which was considered to be a valuable reference work by single malt whisky

aficionados, would omit from its scope a brand that was "well-known". He also observed

that the pursuer had not produced any consumer research to quantify the level of brand

recognition of Tomatin in the UK, or to support the position that Tomatin was a widely-

recognised brand within the Scotch whisky category or by the general public in the UK.

The Visitor Centre

[227]

Mr Russell commented on the numbers of visitors to the Visitor Centre in 2018

(derived from the SWIR 2019 data). In 2018, the Visitor Centre attracted 55,379 visitors. This

was the first year in the period 2007 to 2018 that the number of visitors was greater than that

recorded for the first season after the opening of the Visitor Centre (from May to September,

in 1992). In 2018, for the first time, sales exceeded £1 million. He understood that this was

as a result of the pursuer achieving a significant increase in the average spend per visitor.

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Income from sale of whiskies accounted for most of this income. Visitor centres were

becoming recognised as important profit-centres, not least because the profit margins on

bottled whisky were likely to be much higher where the producer was also the retailer. A

visitor centre was important in attracting customers to shop and to try out the product at the

visitor centre's bar, after having learned or become enthused about the brand during a

distillery tour. From his own experience, he was aware of other distillery visitor centres

which restricted the size of the centre and its car park, in order to discourage coach trips or

casual visits by tourists in transit seeking a comfort break. By this means the genuine

whisky enthusiasts would have a more bespoke, enhanced experience, with the view to

these kinds of customers purchasing rare, limited edition or premium whiskies.

[228]

In relation to the Tomatin-branded retail offer, this was similar to that of other

distillery visitor centres, and was comprised of clothing (T-shirts and polo shorts), foodstuffs

(jam, biscuits and chutney) and glassware. Mr Russell observed that the report of the

private investigator employed by the defender had also noted scarves and carrier bags, as

well as "Loch Ness" water in miniature bottles, a few books about whisky and unbranded

and branded wooden craft items (clocks and tea-light holders). The only branded foodstuffs

on offer at that visit were souvenir boxes of whisky fudge. Mr Russell was not aware of any

other retail outlet, other than the Visitor Centre, which offered the pursuer's non-whisky

branded items for sale. The pursuer's branded retail offering on its website comprised nine

items: a gift card, a triple pack of whisky miniatures, a bobble hat, a shopping bag, a bar

runner and a pin badge. He characterised these as "a very limited range of inexpensive

branded goods". He could not see how this could be a "valuable business" for the pursuer.

These items appeared to be geared toward advertising the pursuer's whiskies. He could not

recall seeing anyone apart from the pursuer's employees wearing Tomatin-branded

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clothing. If he saw an item such as a mug or shirt bearing the word "Tomatin", or the names

of places such as Oban, Aberfeldy, or Craigellachie, he would not consider these to be

related to the distillery in any of those places, unless they bore the stylized version of the

band name or logo, or both. He did not believe it was common for single malt whisky

brands to register trade marks for non-whisky goods and services. Mr MacLean had

referred to the single example of Johnnie Walker having a registered trade mark as part of its

global promotion activities, but in his view that was a famous international brand which

sold branded merchandise around the world for many decades. Its trade-name was not a

place-name.

[229]

In Mr Russell's view, the Visitor Centre did not carry the full range of goods and

services (such as a food-hall, general bookshop, garden equipment and furniture etc) which

one might expect to find in a retail development near a major highway. He noted as

examples the House of Bruar and (to a lesser extent) the Brechin Castle Centre. He was not

surprised at this as the prime purpose of a distillery visitor centre was to promote and sell

whisky; it was not a general retail outlet. Moreover, he had found no reference to a café or

restaurant in the Visitor Centre in the 28 years since it had opened. Having regard to the

present-day offering of the Visitor Centre, Mr Russell did not believe that the Development

would compete directly with the goods and services offered at the Visitor Centre.

[230]

In Mr Russell's view even long-established distilleries do not have the right to the

exclusive use of a place name for all of their branded goods and services. He noted from an

analysis of trade marks listed in schedule 1 of The Scotch Whisky Regulations 2009 ("the

2009 Regulations") that the class 33 registrations for Aberlour and Bunnahabhain carried the

proviso that the mark be used in relation only to Scotch whisky and that the registration

gave no right to exclusive use of the word "Aberlour".

132

Mr Russell's comment on the Development

[231]

He was asked to comment on how the Development might impact on the pursuer's

business. He was not aware of any distillery that sold fuel. While a few distillery visitor

centres offered café or restaurant facilities (eg The Glenlivit, Ardbeg and The Macallan), it

was less common for distilleries to offer dining facilities if they were close to other food

outlets. This was because it was considered undesirable to leave distillery premises open to

the general public at night. In his view, a café or restaurant at the Development might

generate a greater number of visits to the area from travellers on the A9 and from local

people. The Tullibardine Distillery had benefitted in this fashion from the nearby Baxter's

retail outlet and restaurant. In relation to the Development's proposed Holiday Inn Express

hotel, this catered for a very different visitor experience than the small boutique-type

offering at the few distilleries that offered overnight accommodation (and of which Tomatin

was not one). In the event the pursuer built a hotel, it was likely to be in a different market

than what was proposed at the Development. It was unlikely that the Development would

sell Tomatin-branded items, unless the pursuer agreed to this and provided these items to

the defender.

Mr Russell's conclusions in his first report

[232]

Mr Russell summarised his conclusions as follows (omitting his conclusion on

Tomatin as a place):

"Tomatin was bottled and sold as a single malt Scotch whisky in relatively small

quantities under the brand name before 2012. It was best known not for a brand of

single malt Scotch whisky, but as a large distillery which produced single malt

Scotch whisky for bulk sales and for blending with other whiskies, to be sold under

different brand names.

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13.03 Tomatin Single Malt Scotch Whisky

As a single malt Scotch whisky, Tomatin today is a respected name within the Scotch

whisky trade. However, it is a small player within the Scotch whisky market, rated

only 39th in the list of best-selling single malt Scotch whiskies and far lower in any

list of best-selling Scotch whiskies.

Tomatin is not promoted in the UK on the scale of well-known brands such as

Famous Grouse, Bell's and Glenfiddich, and has limited availability in mass retail

spaces such as supermarkets. Comparatively small sales figures suggest it has not

achieved widespread brand recognition among Scotch whisky drinkers in general,

and its sales are dwarfed by many of the better-known Scotch whisky brands

including those referred to in section 8, above.

13.04 Tomatin Distillery Visitor Centre and Ancillary Services

Visits to the Tomatin Distillery Visitor Centre have increased by around 10 per cent

in the 26 years between its opening in 1992 and 2017. Despite this relatively small

increase, sales of goods at the [Distillery's Visitor Centre] now exceed £1 million

but those sales are mostly of Scotch whisky.

The distillery offers tours, a limited range of branded goods in its shop, and has no

café or restaurant facility. Its other branded goods appear to be sold only at the

[Distillery's Visitor Centre], with a more limited selection available to order from the

company's website. It is not a significant retail outlet for goods or services other

than those related to its brands of Scotch whisky.

I do not know of any Scotch whisky [distillery's visitor centre] which has developed

a retail outlet such as, and on the scale of, the one proposed by [the defender]. I

think it unlikely that [the pursuer] or any other company would invest in the

development of such a retail outlet at a distillery.

13.05 [The pursuer's] reputation in relation to its trade marks

Until the last decade, the Tomatin Distillery was known primarily as a producer of

bulk stocks for blending by other companies, and to a lesser extent for its own

blended Scotch brands. The name was little known outside the north of Scotland,

and in the Scotch whisky trade.

Since 2012, TDC has made great strides in developing retail sales of the Tomatin as a

bottled single malt Scotch whisky, and has opened a [distiller visitor centre].

However, the statement that Tomatin is `universally known and respected

worldwide' (Charles MacLean's Conclusions, v) seems to me to be a very great

exaggeration.

134

It is not heavily promoted in the UK, to the extent of leading brands of Scotch whisky

such as Famous Grouse, Bell's and Glenfiddich. Nor does it have the brand visibility

that such brands enjoy in mass retail spaces such as those in supermarkets and travel

retail outlets. It remains a niche brand within a niche market, in the UK and

internationally.

13.06 [The defender's] use of its proposed trade marks and the impact on [the

pursuer]

Charles MacLean states that `any goods and services bearing the [pursuer's] word or

figurative marks will be assumed to have been originated by [the pursuer]'. But I do

not know of any proposal by [the defender] to use the [the pursuer's] figurative

marks.

If [the pursuer] has a concern that the use of the word `Tomatin' is an issue in this

regard, then one might have expected the company to have attempted to prevent the

use of the word in the names of other businesses in the past.

Tomatin is known and has long been known as a place, just as are Oban,

Craigellachie, Ben Nevis and many other places which have distilleries named for

them. I would not expect any item bearing the name of one of any of those other

places to have originated from the distillery or its owner, unless it bore the whisky

brand's logo.

I believe that most people who go to Craigellachie, for example, do not assume that

the Craigellachie Hotel is owned by the same company as the Craigellachie

Distillery. Or that in Dufftown, The Whisky Shop Dufftown is owned by the same

company as Dufftown Distillery.

13.07 As someone who has worked in the whisky business for more than 30 years

and purchased and read about whisky for much longer, I do not think that Tomatin

Trading Company sounds like the name of a Scotch whisky brand nor a S cotch

whisky distillery owner.

I do not know of any Scotch whisky distillery which has the name `Trading' in its

distillery name, nor in its brand name." (Emphasis added.)

Mr Russell's supplementary report

[233]

In his supplementary report, Mr Russell responded to points made by Mr MacLean

in his principal report. The relevant topics are as follows:

Tomatin-branded whisky sales pre-2012: Mr Russell rejects Mr MacLean's

emphasis on the fact that, unlike the majority of malt whiskies, Tomatin single malt

135

whisky was bottled in limited quantities in the 1960s and 1970s. There was simply

no evidence that Tomatin was well-known to Scotch whisky drinkers. The point was

that most drinkers of Scotch malt whisky did not have access to single malts before

the 1980s. As at 1978, single malt whiskies accounted for less than 1% of the world

market for Scotch. In Mr Russell's view, given that the relevant market was a "niche

market" which accounted for "just 1 per cent of all Scotch whisky sales," it would be

"incredible" that Tomatin would be well-known to Scotch whisky drinkers.

Advertising and promotion since 2012: Mr Russell also responded to

Mr MacLean's stated lack of any knowledge of malt whisky being advertised on TV

or bill-boards. Mr Russell provided a number of examples of these forms of

adverting by Glen Grant (whose "whisky expert" character, Michele, became a cult

hero in Italy), Glenmorangie (the first single malt whisky brand to advertise on TV in

the UK, in the late 1990s and early 2000s), The Macallan, The Glenlivet and

Glenfiddich. He also gave examples of bill-board advertising by some of these

brands as well as others (eg Highland Park). Mr Russell did not accept as conclusive

Mr MacLean's description of single malt whisky consumers as being:

""`explorers' and `pluralists' (they do not stick with one brand), which is why

exposure through social media recommendations has become so important."

Leading brands do all these things, but they also invest heavily in television, print

media and outdoor media to increase reach and increase brand awareness among

Scotch whisky drinkers, beyond the narrow market segments identified by Mr

MacLean in the niche market of single malt Scotch whisky drinkers." (Emphasis

added.)

In reply to Mr MacLean's description that it was "absurd" to compare Tomatin's

volumes of sale with the market leaders in blended whiskies (such as Johnnie

Walker, The Famous Grouse etc), Mr Russell justified this approach. He had been

asked to consider the brand awareness of Tomatin among Scotch whisky drinkers;

136

those drinkers were predominantly drinkers of blended whiskies who demonstrably

preferred the leading brands. Considered in the context of the UK market in single

malt whiskies, it remained his view that Tomatin was a relatively small player.

Brand awareness/reputation in the UK: Mr Russell agreed with Mr MacLean

that the key market for single malt whiskies was the single malt whisky aficionado.

However, that was not the only market. In his view, the pursuer was not at present

seeking to increase its awareness among Scotch whisky drinkers in general or to

recruit new drinkers to its brand as, for example, The Glenlivit, Glenfiddich or the

Macallan seek to do. In his opinion, brand awareness remains "restricted at present

to the highly-engaged but still very small segment of the Scotch whisky market".

Mr Russell did not criticise the pursuer's approach: it was following a tried and

tested formula for brand-building. But it explained why Tomatin was only the 39th

best-selling single malt whisky in the UK and "was not well-known" to the wider

group of Scotch whisky drinkers. He regarded Mr MacLean's statement that Tomatin

was "respected world-wide" as a very great exaggeration.

Mr MacLean's conclusions: Mr Russell agreed with certain of Mr MacLean's

conclusion that Tomatin was known to single malt whisky aficionados from

the 1970s, but that was "a very small segment" of Scotch whisky drinkers. He

reiterated his other conclusions, including that the purpose of a visitor centre at a

distillery was to sell whisky, and that was the context for his observations about the

limited retail offering of non-whisky branded merchandise. While the pursuer had

obtained the 2018 Marks in respect of other classes of goods and services, the pursuer

"does not have or appear to be currently developing a significant or any trade in

137

other goods or services", such as those the defender proposed to offer though its

shops, hotel or restaurant.

Mr Russell's parole evidence

[234]

Mr Russell's experience in the whisky industry included being an archives

consultant to Chivas Brothers for 11 years, during which time he established the company's

brands archive at Strathisla Distillery and he also undertook research related to the defence

of the Glenlivit trade marks. He had also undertaken trade mark-related research projects

for a number of other distillers. He was also a brands heritage manager for Glenmorangie,

which was a subsidiary of the luxury goods company, LVMH Moet Hennessy.

[235]

Mr Russell drew a distinction between the single malt whisky aficionado and the

single malt whisky explorer. The latter are, as Mr MacLean explained, interested and move

from one brand to another; they are a subset of the single malt whisky aficionado. Single

malt whisky aficionados may also explore to some extent, but they are happy to stay with

their preferred brands.

[236]

He explained that the SWIR was an industry body that collated data provided by

subscribers within the whisky industry. In relation to the pursuer's spreadsheets showing

the prestige and prestige plus band single malt whiskies, he explained that it was no longer

unusual to pay, say, £75 per bottle of single malt whisky. At that price point, one was still

talking about drinking the product. At the higher price points of prestige and prestige plus,

these were either bought to impress or, more typically, as an investment much in the way

expensive watches or paintings were bought as investments. He would be very, very

surprised if these kinds of products were found in mass retail outlets. He did not regard

these spreadsheets to be complete: Glenmorangie had had six releases, but these were not

138

included. He was also puzzled that Ardbeg was ranked at the bottom. It had single cask

releases as well as multiple expressions and he believed that these were not reflected in the

figures. Moreover while the pursuer had added in figures to reflect sales via the Visitor

Centre, comparable figures from sales at other visitor's centres would not be included in the

SWIR data.

Cross-examination

[237]

In cross-examination, Mr Russell accepted the general proposition that sales of

Tomatin in Tesco shops would enable it to reach a wider market. However, Mr Russell

explained that such outlets were not usual for the single malt whisky aficionados. There

was no challenge to his own online search, which had produced a nil return for a search of a

Tomatin products on Tesco's website. The need for a build-up of stock was explored with

him, including the need to have a supply of different aged cases, in order to ensure the

ability to construct a consistent single malt whisky product.

[238]

The Distiller's early foray into a promotional film, with John Lawrie (of "Dad's

Army" fame) was put to him as unique. Mr Russell did not demur, but his recollection was

that it had been filmed in the Freeburn Hotel (not the Distillery), and that it had been to

promote the Distillery, not Tomatin as a brand. A number of the pursuer's collaborations

were put to Mr Russell, including one with Black Isle (a whisky-flavoured beer) and with

Deans (a Tomatin single malt whisky fruit cake), the pursuer's sponsorship of Inverness

Thistle Football Club (with "Tomatin malt whisky" displayed on the strips), its stall at the

Belladrum Festival and the pursuer's Facebook page giving away tickets to the BBC Good

Food Winter show at Birmingham's NEC. Mr Russell acknowledged these examples, but

observed these were reaching relatively small numbers of the public.

139

Re-examination

[239]

In re-examination, he was asked to explain his comment (in one of his reports) about

"the challenge" in promoting brand awareness. The challenge was creating brand

awareness "getting noticed" in a "crowded UK whisky market". The standard methods of

doing so were through television advertising, print media, billboards and posters. He had

seen no evidence that the pursuer had employed any of these means to any great extent,

beyond the north of Scotland. Nothing of what had been put to him in cross-examination

(noted in the preceding paragraph) changed his view on the issue of brand awareness. He

elaborated: every brand believes it is well-known. However, it was necessary to "grab the

attention" of the average consumer. Even the bigger brands found this hard to achieve,

especially in a crowded market. It was "difficult to elbow your way onto the market". He

respected the Tomatin brand in terms of its quality, but it was not particularly well known

in the UK Scotch whisky market. He had not seen any market research. Accordingly, in

terms of the sales data for single malt whiskies in the UK, Tomatin was only 39th in the UK.

It was not in the top 20. When he had worked for other brands (eg Glenmorangie), Tomatin

had never been included as a competitor to those brands. In terms of the whole UK whisky

market (ie blended as well as single malt whiskies), the brand awaren ess of Tomatin was

"very, very low", like many of the other single malt whisky producers. It took a very high

investment to become well-known in this market.

140

Discussion

Comment on credibility and reliability

[240]

The pursuer challenged the credibility and reliability of Mr Bath and Mr Frame.

While the defender was more circumspect, it challenged passages in the evidence of

Mr Bremner as lacking credibility. It will be apparent from my consideration of the

evidence of these witnesses, below, that there are certain matters on which I do not find

them credible. Mr Bremner was particularly prone, at times, to overstate or exaggerate

matters. He was evasive in his answers about the pursuer's proposals for the Visitor Centre

falling within the Additional Classes. It will be apparent from the evidence of Mr Frame

which I have already noted, that he was not always able to provide a credible answer to

some matters put to him (eg that the image of the Development on the reverse of the

business card produced, and said to have been handed over at the February 2018 meeting,

postdates that meeting). That issue notwithstanding, the relevant evidence Mr Frame was

able to give was in relatively short compass; Mr Bath's relevant evidence was in even shorter

compass. I indicate in the course of my discussion, below, the specific chapters of evidence

of these and other witnesses on which I was unwilling to place any reliance.

Who is the average consumer?

[241]

I have had the benefit of very careful and full written and oral submissions. I intend

no discourtesy to counsel if I do not rehearse these. I have had regard to these and the cases

cited and helpfully produced in a number of lever arch files, including the files of

supplementary authorities. Having just recorded the experts' evidence relevant to the issues

of (i) who is the average consumer of the pursuer's products and (ii) the nature of the

pursuer's reputation (relevant inter alia to section 10(3)), it is convenient to deal first with

141

those issues - not least because they are relevant to more than one of the legal grounds for

infringement or invalidity. The conditions to establish the statutory grounds are set out

below (at paras [258] and [259]).

[242]

As noted above, "the average consumer" is a legal con struct to be determined by the

court. That concept is integral to some of the criteria to be met in establishing the statutory

grounds for infringement (eg the identity or similarity between the trade mark and sign in

question, the perception of a link between them and the likelihood of confusion).

Notwithstanding the apparent differences of opinion between Mr MacLean and Mr Russell

in their reports (eg on matters of the pursuer's reputation), their considered and common

position (which, of course, informs but does not bind the court) was that the average

consumer of the pursuer's Tomatin-branded whisky was the "single malt whisky

aficionado" or the "single malt whisky explorer". Mr MacLean's opinion was that "The

Tomatin name is known to single malt Scotch whisky aficionados. But it is precisely such

`aficionados' who are the key customers for the brand". In Mr Russell's opinion,

"The Tomatin name is known to single malt Scotch whisky aficionados a

growing but still very small segment of the whisky-buying public. The brand's

case sales are diminutive when considered within the category of Scotch whisky, a

crowded market which includes hundreds of brands and a great number that are

better known to whisky drinkers in the United Kingdom ." (Emphasis added.)

This is consistent with the following passage of evidence of one of the retailers, Mr Gibson:

"Since, by [the pursuer's] choice, it is not generally found for sale in supermarkets, it

is most likely to be purchased by those who are interested in whisky and who either

buy it on line or in specialist shops such as ours in Dumfries, where staff can talk

knowledgeably to a customer, who is maybe wanting to try something new, to help

to inform them in making their choice."

No contrary evidence was led, and I accept that the average consumer of the pursuer's

product is the "single malt whisky aficionado" or the "single malt whisky explorer".

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Tomatin's reputation in the United Kingdom

[243]

The evidence relevant to the issue of Tomatin's reputation in the United Kingdom

(eg such as to engage section 10(3)) was in surprisingly short compass. No evidence in the

form of market research was produced. The principal evidence came from the parties'

experts. There was also the limited evidence from the spreadsheets relative to the pursuer's

rankings by sales and market share in the single malt whisky sector in the United Kingdom.

While in submissions the pursuer's senior counsel sought to dismiss the evidence of the

spreadsheets of global and United Kingdom sales of single malt as a red herring, both

experts had regard to these figures in coming to their views. In the context of assessing

reputation, the figures of market share and ranking are clearly relevant, even if, as Mr Lake

rightly says, these are not determinative of reputation or brand awareness.

[244]

In this context the relevant geographical scope of the Marks is the United Kingdom.

Notwithstanding that, the pursuer elicited evidence about its global rankings for its total

output (the pursuer had a higher ranking in global terms). This evidence is peripheral to the

question of the pursuer's reputation in the United Kingdom (which can only arise in respect

of branded products and services sold or provided in that market). On the evidence, the

vast majority of the pursuer's product was exported for blending by third parties. The

pursuer's witnesses listed the international awards it had won. However, there was no

evidence to indicate how the prominence or ranking of the pursuer globally, or how any

awards it has won internationally, might come to the notice of the general public in the

United Kingdom. Within the United Kingdom, figures were produced to vouch the

pursuer's volume of sales as well as its rankings, in terms of total output and in the single

malt whisky sector. It was under reference to these figures for Tomatin (namely, its market

share of 0.3% of the United Kingdom market in single malt whisky and its ranking of 39

)

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that Mr MacLean readily accepted that the pursuer was not a well-known brand among the

whisky-drinking public in the United Kingdom.

[245]

In coming to their view on the issue of reputation, Mr MacLean and Mr Russell made

reference to matters such as the purser's marketing and channels of distribution. It was

acknowledged that the amount of advertising and promotion and the use of mass retailers

were vital elements to generate large sales and to create significant brand awareness. The

pursuer's witnesses who spoke to these matters (Mr Adamson, Ms Masson and Mr Bremner)

also acknowledged the importance of promotion and advertising spend as well as the need

for access to mass retailers in driving increased sales and brand awareness, and they

explained some of the barriers the pursuer faced in availing itself of these means.

[246]

On the pursuer's evidence, from about the mid-2010s it began to consider building a

coherent brand with "authenticity" or "a story" to better attract its target-market for its

single malts (as described by Mr Adamson and Ms Masson), and it undertook a brand

"refresh" (in the form of a curvier bottle, re-shaped or sharpened insignia etc), which was

rolled out in about 2016. However, the pursuer has not deployed the means generally

accepted as necessary in order to build brand awareness in the mind of the general public or

to increase sales, an omission on which Mr Russell had commented. In respect of its sales

channels, the pursuer almost exclusively used specialist retailers (whether terrestrial or

online). The experts were agreed (as were others who spoke to this), that it was the single

malt whisky aficionado or the single malt whisky explorer who used those channels, not the

general public. While several of the pursuer's witnesses stated that the pursuer had begun

to make some of its product available via some Tesco stores in Scotland, the evidence on this

was limited and unpersuasive: while both Ms Masson and Mr Adamson explained that it

was only offered through some Tesco stores, and only in Scotland, they differed as to how

144

long that had been the case. Ms Masson mentioned four years, whereas Mr Adamson

thought it had been sold in Tesco supermarkets in Scotland for the past two years. More to

the point, Mr Bremner acknowledged that the only product offered through that channel

was a Tomatin single malt through some Tesco stores, "but not many". It is a notable

omission that the pursuer produced no documentary evidence to vouch any of these sales or

the number and locations of Tesco stores in which the Tomatin brand was being sold.

Moreover, the pursuer's unvouched evidence must be assessed against Mr Russell's

evidence that his recent test searches on Tesco's website for Tomatin produced nil returns.

Likewise, while the pursuer led two retailers, it produced no evidence of the locations of its

specialist distributor or retailers, and from which evidence it might have been possible to

draw an inference as to the geographical reach or degree of market penetration of its retail

channels. Strikingly, the pursuer led no evidence that its product was regularly available

from any physical (as opposed to online) retailer in any other part of the United Kingdom

(other than Scotland). Mr Russell and Mr MacLean also accepted that the pursuer's limited

marketing activities and focus on specialist retail outlets explained the pursuer's position in

the single malt Scotch whisky and the blended Scotch whisky markets in the United

Kingdom.

[247]

Mr Bremner commented on the pursuer's strategy, having regard to the resources

required to build sales and reputation:

"You also have to factor into the equation that the brands with the biggest market

share have massive resources that are used to sell, promote and support their

brands. They have distribution in all channels and get a large part of their volume

through supermarket sales. Our strategy has been to build our brand in `specialist

retail' and then expand into the supermarket sector in order to get more volume

this is a work in progress." (Emphasis added.)

145

These comments explain why the pursuer has not spent any significant sums in the United

Kingdom on promoting its brand. The only figure that could with any certainty be

identified as being spent on marketing and promotion in the United Kingdom was

the £10,800 spent in 2019 on the Visitor Centre. On the limited evidence led, this appeared

to be focused on attracting members of the public to the Visitor Centre, and did not appear

to be specifically promoting the Tomatin brand (albeit the pursuer promoted the Tomatin

brand and used the Marks at the Visitor Centre in the variety of ways Mr Bremner

described). The geographical distribution of the leaflets (which came out of this spending)

was limited. Ms Masson spoke to other, larger figures of expenditure on marketing and

promotion, but these appeared to be global figures, without any breakdown by territory or

type of support, and are in themselves of no evidential value. Insofar as one could glean

from the two retailers (Mr Gibson and Mr Hodcroft) of the kinds of support the pursuer

offered, this was on a very modest scale (a free Tomatin -branded souvenir item, individual

trips to the Distillery or time-limited promotions). The pursuer points to non-traditional

channels such as social media and it produced lists of various promotional activities

undertaken. Many of these were one-off or one or two-day events, each with relatively

limited geographical scope. I accept Mr Russell's assessment that this kind of activity was

modest in scale and limited in impact.

[248]

Mr Russell noted that until recently the pursuer's marketing efforts have focused on

single malt explorers and single malt aficionados. These consumers bought single malt

whisky, which was a small niche within the much larger market in the United Kingdom for

whisky (blended or single malt) and which, Mr Russell noted, would also include whisky

produced by other countries (such as Ireland, Japan or the United States). He described the

cohort of single malt explorers and single malt aficionados as forming an enthusiastic but

146

relatively small cohort of Scotch whisky drinkers. He explained that the pursuer has not

used the standard methods used by well-known brands to, as he put it, "get noticed" by

the average consumer, such as television advertising, print media advertising, and billboard

and poster advertising by roadsides, in stations and in other public spaces. I also accept

Mr Russell's evidence (and to which there was no challenge) that single malt whisky was a

niche product which formed only a small part of the wider market for whisky (blended or

single malt) in the United Kingdom. Both experts spoke to the received wisdom that

advertising for this kind of consumer was counterproductive. I also accept their evidence on

this issue.

[249]

The experts were at one in their final and considered opinions that the pursuer was a

"small player" in the relevant market in the United Kingdom, which was described as

mature and fragmented. Mr Bremner also accepted this he could hardly do otherwise,

without losing all credibility, given that those are the very words he used in his radio

interview with the Inverness Chamber of Commerce. In other evidence, Mr Bremner

explained that the pursuer's business focused on exports for single malt Scotch whisky,

given that the United Kingdom contributed only a modest amount to its turnover.

Ms Masson was an outlier on this issue, but these passages of her evidence were wholly

unpersuasive and, not surprisingly given her role, partisan. While on her evidence the

pursuer aimed to be in the top ten brands in the United Kingdom in respect of sales of single

malt whisky, and it had achieved relatively high percentage increases in growth in the last

few years, it remains the case that this is from a very low starting point. At best, these

passages from her evidence reflected the pursuer's ambitions for the Tomatin brand in

which, by reason of her position, she was heavily committed. She voiced what was

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essentially the "internal" view. Her evidence perhaps proves the truth of Mr Russell's

observation, that every brand believes it is well known.

[250]

Mr Russell's evidence was particularly cogent, as he dealt with this issue in detail,

displayed considerable insight, and he was able amply to vouch the conclusions he reached.

In light of his evidence, which is recorded above and which I accept in its entirety, the

pursuer was a small player in what is a mature and fragmented market - qualities that make

it difficult to increase market share or brand awareness. The pursuer's decisions not to use

the principal channels to grow their sales, of distribution through mass retailers or

advertising in the traditional media, has no doubt limited the development of Tomatin's

reputation in the Unkited Kingdom.

[251]

Finally on this matter, there is the evidence of Mr Lederer. By reason of his having

worked at the highest levels in the hospitality and drinks industry, h e was well-placed to

bring a broader industry-wide perspective to this issue than the experts, whose expertise

was in single malt whiskies. He was obviously wholly independent of the parties and his

evidence was not challenged. His clear view was that Tomatin was a "very small player" in

the United Kingdom market for single malt whiskies.

As the pursuer relies on the same body of evidence to establish reputation and good will,

which involve mixed questions of fact and law, I address the impact of my findings on this

evidence in my consideration of the pursuer's legal grounds.

The fact that the Development has not yet been built and the defender's fundamental

challenge

[252]

One of the unusual features of this case is that the defender's Development is unbuilt

and, while there is a firm intention for the Development to include a hotel, restaurant and

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petrol station (operated by franchisees rather than by the defender), there is uncertainty (in

part as a consequence of the impact of the Covid pandemic) as to what the retail offer will be

at the Development and by whom this will be provided.

[253]

This poses challenges for the pursuer. It will be obvious that these circumstances

render problematic the application of several of the conditions of the statutory grounds.

First, where the Development has not been built and no goods or services are yet offered,

how is it possible to identify the goods or services of the defender (which is the first part of

condition 5 (for the purposes of section 10(2), and is the substance of condition 6 (for the

purposes of section 10(3)), or to make the comparison between those goods and services and

those of the pursuer (and which is necessary to satisfy the second part of condition 5)? The

cumulative effect of these difficulties also impacts the application of condition 6 (for the

purposes of section 10(2)), involving the assessment of the likelihood of confusion, which is

to judge the goods or services in question through the eyes of the average consumer. How

can the relevant test be applied if one cannot identify the average consumer of particular

goods or services without first identifying those goods or services (an element inherent in

condition 6)? Moreover, in assessing the likelihood of confusion, it is necessary to examine

the objective conditions under which the goods and/or services may be present on the

market. How can the court examine those objective conditions where the goods and services

have not been offered, and the Development is as yet unbuilt?

[254]

The defender submits that the Court can only speculate as to what those objective

conditions might be in the circumstances of this case. It notes that the hotel in the

Development is likely to be called "Holiday Inn Express Inverness South, Tomatin". The

word "Tomatin" is used to designate the location of the proposed hotel. The café is likely to

be called the "Findhorn River Café". The fuel filling station is likely to be called "Total".

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These sub-brands will exist as the defender will have a number of franchises at the

Development, such as Holiday Inn Express and Total. It submits that all of these branding

decisions will be significant to the objective conditions under which the goods and/or

services may be present on the market. In these circumstances, the nature of any alleged

trade mark infringement in the future is highly speculative, as neither has the Development

been built nor final decisions been made in relation to the sub-brands of the facilities at the

Development.

[255]

The pursuer's position is that it should not be penalised for acting promptly in

raising these proceedings and that explains why there is no present sale of goods or offer of

services at the Site. In reply, the defender argues that the timing of the principal action was

not prompt; it was premature, as there has been no use of the Sign in the provision of goods

and services. (The defender also argues that the pursuer's action is prejudicial: if the

defender's Application is granted by the UKIPO, it would afford a complete defence to the

principal action on the question of infringement of the pursuer's Marks. I address this

argument below (at para [384]).)

[256]

The defender developed its submission of prematurity as follows. Under reference

to several English cases considering its jurisdiction to grant protective orders against a

future wrong (a quai timet ("because he fears") claim), namely, Russell LJ in Hooper v Rogers

[1975] Ch 43 at 50C-D ("Hooper"), Chadwick LJ in Lloyd v Symonds [1998] EWCA Civ 511 and

Merck Sharpe Dohme Corp v Teva Pharma BV [2014] FSR 13 ("Merck"), the defender submits

that the mere possibility of a risk of infringement is not enough and that the party seeking

such an order must establish a "concrete, strong and tangible risk that an injunction is

required in order to do justice in all the circumstances" (Merck at paragraph 56 ). Moreover,

the defender refers to the observations of Arnold J in Napp Pharmaceutical Holdings Ltd v Dr

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Reddy's Laboratories (United Kingdom) Ltd) [2017] RPC 4 ("Napp") (at paragraph 50) in respect

of quai timet claims, that in such cases there may be "a dispute as to whether the defendant

has in fact threatened to do the acts which the patentee alleges the defendant has threatened

to do." In that circumstance, the burden of proof of future infringing acts rests with the

trade mark holder alleging infringement (ibid at paragraph 154), who bears the consequences

of any uncertainties flowing from the timing of its legal proceedings (ibid at paragraph 167).

[257]

While I had no modern Scottish authorities cited to me on this point, the pursuer

relied on the classic formulation to justify an interdict in respect of future conduct (eg in Hay

Trs v Young (1877) 4 R 398) that the pursuer has "reasonable grounds of apprehen sion". As a

matter of Scots law, the pursuer has the onus of proving the grounds on which the interdicts

are sought. It is not obliged to wait until the threatened infringement occurs. However, it

must nonetheless establish that there is a sufficient risk of infringement by the defender in

the future to justify the grant of permanent interdict. There is no need to adopt the precise

formulation from the English cases, but it captures the need for the pursuer to prove there is

a real risk of infringement if the defender is not restrained and the consideration identified

whether an interdict "is required in order to do justice in all the circumstances" may assist

in the exercise of any discretion at the stage when the Court comes to consider the question

of remedies.

The pursuer's grounds for infringements under subsections 10(2) and 10(3) of the Act

The conditions to be satisfied to establish infringement under subsection 10(2) of the Act

[258]

The conditions which must be satisfied to establish infringement under

subsection 10(2) of the Act have been conveniently summarised in one of the leading cases,

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Interflora Inc v Marks & Spencer, [2014] EWCA Civ 1403, [2015] ETMR 5 ("Interflora (No 2)")

at [67] to [69], as follows:

There must be use of a sign by a third party within the relevant territory;

The use must be in the course of trade;

It must be without the consent of the proprietor;

It must be of a sign which is identical with or similar to the trade mark;

It must be used in relation to goods or services which are identical with or

similar to those for which the trade mark is registered; and

It must give rise to a likelihood of confusion.

The conditions to be satisfied to establish infringement under subsection 10(3) of the Act

[259]

The same case of Interflora (No 2) also gives guidance on the ingredients of a claim for

infringement under section 10(3) of the Act, namely:

The registered trade marks must have a reputation in the relevant territory

(which, for present purposes, is the United Kingdom);

There must be use of a sign by a third party in the relevant territory;

The use must be in the course of trade;

The use must be without the consent of the proprietor;

The use must be of a sign which is identical with or similar to the trade

marks;

The use must be in relation to goods or services;

The use must give rise to a link between the sign and the trade marks in the

mind of the average consumer;

The use must give rise to one of three types of injury, that is to say:

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(a)

detriment to the distinctive character of the trade marks,

(b)

detriment to the repute of the trade marks, or

(c)

unfair advantage being taken of the distinctive character or repute of

the trade marks; and

The use must be without due cause.

[260]

The three principal differences between an infringement under these two statutory

provisions is, first, that section 10(3) requires that the trade mark said to have been infringed

has a reputation in the United Kingdom; secondly, that the infringer's use must cause one of

the three specified forms of injury and infringement is a use of the sign, and, thirdly, its use

is without due cause.

[261]

However, for present purposes it is helpful to start by focusing on those conditions

common to both of the statutory grounds (even if they are not formulated in precisely the

same way). These are the last three conditions for a section 10(2) claim, namely, the

condition that the allegedly infringing sign "is identical with or similar to the trade mark"

("condition 4"); that there must be "use in relation to goods or services" which are identical

with or similar to those for which the trade mark is registered ("condition 5"); and it must

give rise to "a likelihood of confusion" ("condition 6"). For its part, the pursuer adopted its

submission on these three elements from its case under section 10(2) for its case under

section 10(3) without further elaboration. I turn to consider the pursuer's claim for

infringement under section 10(2) of the Act.

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Consideration of the claim for infringement under section 10(2)

Conditions 1 to 3

[262]

I am satisfied that the defender's display of its name and design on the billboard at

the junction of the A9, together with their display on its website and business cards, is

sufficient to satisfy condition 1. In any event, the defender accepts that there has been use of

the defender's "Tomatin Trading Company" Sign within the meaning of section 10(4)(ca)

and (d) of the Act, being, respectively, the use of the Sign as a trade name, and its use on

business papers and in advertising. No argument was advanced in respect of condition 2

(use in the course of trade). The defender is not yet trading from the Development (it is not

yet built) but it has secured planning permission; it is seeking tenants; and it is promoting

the Development. For present purposes I proceed on the basis that these steps by the

defender to promote the Development are "in the course of a trade". Condition 3 is

obviously satisfied, as the pursuer has maintained the principal action. In this case, the most

contentious matters are those in conditions 4, 5 and 6. I propose to consider conditions 5

and then 4 first, before considering condition 6. There is a logic to this as these two

conditions are often expressed as having an inverse relationship: the lesser the similarity of

the goods and services (condition 5), may be offset by a greater degree of similarity between

the Marks and the signs (condition 4) and vice versa (Specsavers International Healthcare Ltd v

Asda Stores Ltd, [2012] FSR 19, paragraph 52(g) ("Specsavers")).

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Condition 5: The defender's fundamental challenge that there has been no use of the defender's Sign

in relation to goods and services which are identical with or similar to those for which the Marks are

registered

[263]

The pursuer's case is essentially based on what it anticipates the offering of goods

and services from the Development will be. It is in the context of condition 5 that the

defender identifies what it asserts is a "fundamental flaw" in the pursuer's claims under this

(and the other) statutory ground. The defender's fundamental challenge is that there has

been no relevant use of its Sign in respect of any goods and services (whether similar or

otherwise) and, as a consequence, no comparison is possible to determine if there is any

confusion (for the purposes of subsections 10(2) or 5(2)(b) of the Act). For these reasons, it

contends that the principal action is premature.

[264]

It submits that it is imperative to establish the defender's use of the Tomatin Trading

Company name in relation to particular goods and services because it is those goods and

services that are the subject of comparison with the goods and services for which the

pursuer's Marks are registered (Kerly's Law of Trade Marks and Trade Names (16th ed)

("Kerly's"), at paragraph 16-036)). In the absence of use in relation to particular goods and

services, there can be no comparison (as required by condition 5). The defender refers to

the observations of the Court of Justice of the European Union ("CJEU") at para 21 in

Céline Sarl v Céline SA [2007] ETMR 80 ("Céline"):

"...where the use of a company name, trade name or shop name is limited to

identifying a company or designating a business which is being carried on, such use

cannot be considered as being "in relation to goods or services" within the meaning

of Art.5(1) of the Directive."

In that case the CJEU explained ( at paragraphs 22 to 23) wh at was r equired t o est ablish

u se in r elation t o goods and ser vices:

155

"Conversely, there is use "in relation to goods" within the meaning of Art.5(1) of

the Directive where a third party affixes the sign constituting his company name,

trade name or shop name to the goods which he markets (see, to that effect,

Arsenal at [41], and Adam Opel at [20]). In addition, even where the sign is not

affixed, there is use "in relation to goods or services" within the meaning of that

provision where the third party uses that sign in such a way that a link is

established between the sign which constitutes the company, trade or shop name of

the third party and the goods marketed or the services provided by the third

party." (Emphasis added)

The defender contends that there is simply no evidence that the defender has supplied, or is

or will be supplying, goods and/or services under the "Tomatin Trading Company" sign at

this time. The extent of the defender's public-facing work appears to be the signage on the

Site and on its Website, but it submits that neither of those amounts to the use of the

defender's Sign "in relation to" any specific goods and/or services. It submits that the

defender's limited use of the "Tomatin Trading Company" Sign in that way is insufficient to

establish trade mark infringement. For these reasons it contends that the principal action is

premature.

[265]

The defender's fall-back position is that the fact that the court is being asked to

speculate on what may happen in the future reinforces its fundamental challenge that there

is no trade mark infringement at this time; and that there is too much uncertainty for the

court to reach an informed conclusion about the prospect of trade mark infringement in the

future.

Condition 5: Consideration of whether there has been use of the defender's Sign in relation to goods

services which are identical with or similar to those for which the Marks are registered

[266]

The pursuer does not directly address the defender's fundamental challenge. Rather,

the pursuer frames this part of its case under reference to the dictum that a "lesser degree of

similarity of the goods and services may be offset by a greater degree of similarity between the

156

Marks and the signs and vice versa" (per Specsavers paragraph 52(g)). It contends that as

there is "an extremely high degree of similarity" between the Marks and the defender's sign,

it will therefore suffice if there is a lesser degree of similarity in relation to the goods and

services anticipated to be offered at the Development.

[267]

The parties divided their submissions into two parts: first, to address the first part of

condition 5 ("use of the defender's Sign"), which I record in the next two paragraphs, and

their submissions on the second part of that condition involving the comparison ("...goods

and services which are identical with or similar to...").

[268]

In seeking to satisfy the first part of this condition, the pursuer contends that the

defender has used the word "Tomatin" as a sign in the course of trade. The basis for this is

the fact that the defender had displayed a pot of strawberry jam (labelled "Tomatin") and an

image of the pursuer's casks on its website (see para [10(2)], above) and certain statements

made in some of the defender's marketing documentation, and which it says "provides a

telling indication of what [the defender] has in mind for the future". It contends that this is

"an indication of how the defender would seek to broaden its use of `Tomatin'" (emphasis

added). Apart from the limited degree of advertising or promotion of the Development (eg

on the signage on the Site, in its use of the Sign on business cards or its website) or in some

of the defender's promotional or fund-raising materials (the 2020 Brochure and appended

Marketing Strategy), no other evidence was founded on to show that there has been actual

(as opposed to apprehended) infringement of the pursuer's Word Marks and, indeed, this

submission leaves out of account Mr Frame's evidence that the Tomatin Trading Company

name will always be used in full.

[269]

In its reply, the defender notes that it removed the photographs of the pot of jam

and the pursuer's casks from its website two years ago, in May 2019, once it became aware

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of the pursuer's objection. It also notes that the description under the photograph of the jam

pot had been "The shop will feature a food hall dominated by local produce..." (emphasis

added); that the photograph had depicted local produce; and that that was the clear and

obvious context for the use of the word "Tomatin" (ie as a location). It submits that the

photograph, taken together with its description, cannot found any case of infringement or, at

most, it was de minimis and cannot justify the orders the pursuer seeks. If this were a de

minimis infringement, then (citing Arnold J in Napp Pharmaceutical Holdings Ltd v Dr Reddy's

Laboratories (United Kingdom ) Ltd [2017] RPC 4 at paragraph 152), "that threat does not

justify the commencement of proceedings by the patentee (whether in order to seek an

injunction or in order to seek a financial remedy)." While that comment was made in a

patent case, the defender submits that the same principle applies to a case of trade mark

infringement. Where a trade mark holder does take premature action, it must live with the

consequences that at proof there is little or no evidence of infringement.

[270]

In addressing the second element of this condition ("use ...in relation to goods and

services which are identical with or similar to") the pursuer again relies on the

representations it says the defender has made in its various marketing and other materials to

identify what goods and services might in future be offered from the Development, and the

representations made of its ambitions and its efforts to attract prospective tenants. The

pursuer refers to marketing materials produced by the defender, including inter alia, the

defender's 2019 brochure, the defender's website, the sign board at the Site, the marketing

being undertaken by the defender's agents (Cadell Property), its business plan as at July 2020

"the 2020 Business Plan", together with the Marketing Strategy and Financial information

about the Defender's Development ("the Marketing Strategy" appended to the 2020 Business

Plan). The pursuer acknowledges that, while the items to be sold from the Development's

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retail units cannot be identified, it maintains that "it is possible to determine that the offer of

commercial retail property under the Figurative Sign falls within or is very similar to Class 35

for which the 2018 Word Mark and 2018 Figurative Mark have been registered" (emphasis

added).

[271]

The pursuer relies in particular on statements in the documents just noted in order to

demonstrate what it says are the defender's intentions in terms of its proposed retail offer,

namely:

"[T]he range of goods that are likely to be sold will be up-market" and will

"showcase the best of the North Highlands Region" (in the 2020 Business Plan);

It will be "Highland Merchandising" (in the Marketing Strategy and 2019

Brochure); and,

"The theme will be quality, sustainability and North Highlands focused"

(ibid).

[272]

It also refers to the example Mr Bath referred to in his evidence of products that were

"artisanal of the region", such as "Prickly Thistle"; and it notes that that company has

already produced a tartan for the Distillery itself. The pursuer observes that comparisons

are repeatedly made with the House of Bruar (see, eg, the Design Statement included with

the defender's 2007 planning application, in the 2020 Business Plan and in its Marketing

Strategy). From this, the pursuer submits that the emphasis on quality products of the

"North Highlands" that would appeal to persons passing on the A9 and that:

"there is sufficient similarity between the products that the defender intends

should be sold at the [Development] and the Scotch whisky for which the Original

Word Mark is registered (J36 6/1 p.370) and Class 35 for which the 2018 Word Mark

and the 2018 Figurative Mark are registered (J37 6/1(iii) p.372 and J38 6/1(iii) p.374,

respectively). They appeal to the same consumer. If the products sold at the

[Development] include foods and drink, they will have the same use and physical

nature and may be competing goods. Those products will be seen to have the same

159

origin and be the product of smaller scale, artisanal producers. They are luxury and

leisure goods and consumers may readily suppose that they are provided by a

common entity. ... The similarity in question is all the more apparent when regard

is had to the degree of similarity between the pursuer's [Marks] and the defender's

signs." (Emphasis added.)

[273]

The pursuer then turns to consider the "likely" offer of the following goods and

services at the Development under the Additional Classes:

"Sale of foodstuffs": The pursuer notes that it is intended that the food and

drink sold at the Development will be locally-themed and sourced from the

Highlands where possible and that, depending on what is sold, "this may be

identical to the items within Class 35 in respect of which" the 2018 Marks are

registered. It further contends that "[e]ven if it is not so, the similarity between the

products in the registration and the ones the defender proposes to have for sale at the

[Development] is apparent". It argues that in relation to the Original Word Mark, as

Scotch whisky is perhaps one of the best known products for consumption

originating from the Highlands, the similarity with the products covered by the

Original Word Mark is also apparent.

"Whisky merchandising": Founding in part on Mr Frame's early approach to

the pursuer that it could sell its products at the defender's Development, the pursuer

invites the court to disregard evidence to the contrary (eg Mr Bath's denial that there

is any intention to undertake the sale of whisky or whisky merchandising), and to

conclude that "it is likely that the defender will sell whisky from the [Development].

If there was merchandising or even a visitor's centre it would be identical with the

goods and services in respect of which the [pursuer's 2018 Marks] have been

registered" (emphasis added.);

160

"Restaurant and other takeaway food provision": The pursuer's submission

is that this offering is in the same position as the sale of foodstuffs. It submits that

the "emphasis on locally sourced products for consumption means that it will be

similar to the sale of whisky for which the Original Word Mark and the

2018 Figurative Mark are registered. In addition, depending on what is sold, it may

be identical to goods in Class 43 for which the 2018 [Marks] have been registered"

(emphasis added.);

"Hotel": The pursuer's submission is that, as a Hotel is a "form of

hospitality", "this is in general similar to the Class 43 items in respect of which the

2018 [Marks] have been registered." It submits that "any provision of a bar within

the hotel would mean that it was identical with this class. In addition, as a form of

leisure and hospitality activity it is also similar to Scotch whisky in relation to which

the Original Word Mark is registered." (Emphasis added.)

[274]

As I understood the involved exercise the pursuer has undertaken, it is essentially to

say that the pursuer's goods are high-end or artisanal and, given that some of the defender's

food or (possibly) retail offering will be artisanal and local, these will appeal to the same

consumer, which is the consumer of the pursuer's goods. Even assuming that that were so,

and that the same consumers might be attracted to the pursuer's and defender's goods, it

does not follow that those goods are identical or similar. Nor am I persuaded that, on this

approach, the consumers will "suppose they are probably by the same entity" (ie the

pursuer). More fundamentally, I am not persuaded that goods are comparable or similar, or

that they attract the same consumer, simply on the basis that they are high-end. In my view,

the conclusion the pursuer seeks to draw, to the effect that Scotch whisky "is similar" to the

161

goods that would be sold at the Development on the basis that the defender intends to sell

high quality products of the "North Highlands", is misconceived.

[275]

As a preliminary point, the pursuer led no evidence as to who was the average

consumer for the pursuer's non-whisky goods and services falling within the Additional

Classes. It cannot elide that difficulty by assimilating the pursuer's class of consumer with

prospective consumers of the Development. While it might be the case that the single malt

whisky aficionado or explorer would take a Distillery tour (falling within educational

class 41), the weight of the evidence was that this was often undertaken by the general

tourist wishing to tick this off his or her "bucket list". Nor do I accept the pursuer's

assertion that the high end or artisanal goods the defender proposes be sold at the

Development would all appeal to the same consumers as those attracted to the Distillery. No

evidence was led on which such a conclusion could be based. In any event, the defender is

in my view correct in its contention that Scotch whisky is not "similar" to food or other

types of retail goods, and that such goods are not a substitute for one another. I also accept

as well-founded the defender's submission that the average consumer of Scotch whisky

will be different from the average consumer of food or other souvenir items. In any event,

the pursuer's focus on the similarity it asserts of the pursuer's consumers and the defender's

presumed consumers, is not the comparison called for in the second part of

condition 5.There is a further difficulty for the pursuer, which is the impossibility of

comparing a known set of goods and services (of the pursuer) with the as yet unknown

offering of the defender. As a consequence of the present economic uncertainty it is

unknown whether the defender can obtain tenants for the retail units at the

Development (as envisaged in its business plan) or whether it will run these itself.

Insofar as there is evidence about the services offered, the model the defender proposes

162

to adopt is to bring in franchisees who will market the services offered under their own

brands (I have noted these, above). The pursuer's case under section 10(2) makes no

allowance for these features of the defender's Development. The case of Schütz (United

Kingdom) Ltd v Delta Containers Ltd, [2011] EWHC 1712 (Ch), provides an example of how

nuanced the question of use "in relation to" goods and services can be. After noting

that some products (such as a car) are comprised of components from different

manufacturers, Briggs J observed (at paragraph 80) that:

"[i]t is commonplace for a manufactured product consisting of components from

different manufacturers to exhibit trade marks in circumstances where a particular

mark on one component is plainly not used `in relation to' either the product as a

whole, or to other components within it. For example, no one would suggest that

the affixing of tyres bearing the name and mark Pirelli to a car made by Ford

gives rise to a use of Pirelli in relation to the Ford car, or even to its wheels. It is

simply a use in relation to the tyres." (Emphasis added.)

On the franchise model the defender proposes for significant elements of the Development,

it is likely that the franchisee's brand name ("Total" or "Holiday Inn") will be the one to be

used most directly in respect of the goods and services they offer, and the name "Tomatin

Trading Company" is in a sense secondary, as the name of the Development. The defender

draws an analogy with the Gyle Shopping Centre: the use of "the Gyle" as the name of

the shopping centre does not mean that that name is used in relation to all of the goods

and services provided there, especially if other names are used more directly with the

goods and services provided (eg a Holiday Inn hotel or a Starbucks coffee shop). I

accept that analogy is well-founded and apposite to the present case. Even in respect of the

retail offer, the circumstances in which any goods or services falling within the Additional

Classes may be provided or under what brands are too uncertain for the court to reach any

properly based conclusion that the defender's Sign is used "in relation to the goods or

services" in the manner discussed in Céline.

163

Consideration of the second part of condition 5 of section 10(2): Whether the goods and/or services

are identical with or similar to the pursuer's goods or services or those proposed under the Additional

Classes

[276]

It remains the case that the exercise of comparing the pursuer's and defender's

respective goods and services (for the purposes of section 10(2), but not section 10(3)) is

to form a view as to whether the defender's goods and services are "identical with or

similar to" those in respect of which the pursuer's Marks are registered. This brings a

further difficulty for the pursuer. That exercise of comparison is judged through the eyes of

the average consumer of the goods and services in question. On the evidence the average

consumer of the pursuer's branded products under class 33 is the single malt whisky

aficionado. The pursuer did not seek to establish a distinct class of consumer in respect of

any of the Additional Classes.

[277]

The pursuer sought to overcome this difficulty with its argument that the goods and

services under the Additional Classes are similar to the goods it offers under class 33, or that

these other goods were equally attractive to the average consumer of its single malt whisky.

I have rejected that argument. The result is that, while there was evidence about who was

the average consumer of the pursuer's Tomatin-branded whisky under class 33, there was

simply no evidence as to who was the average consumer of the particular goods and

services to be offered under the Additional Classes. If there is no use as required by

condition 5 for a claim for infringement under section 10(2) (or under condition 6 for

section 10(3)), a fortiori there can be no comparison of the goods in respect of which the sign

is used, as required by condition 5 for a claim for infringement under section 10(2) (or

condition 6 for a claim of infringement under section 10(3)).

164

[278]

I return to the defender's fundamental challenge. In my view, the pursuer has

not met that challenge. The pursuer has failed to prove any "use" at the present time.

The instance of the word "Tomatin" affixed to the jam pot is de minimis. Any "use" that

may have constituted ceased more than two years ago. The weight of this evidence may

be tested by considering whether the Court would have granted an interim interdict

based on this evidence. Having regard to the exceptionally modest nature of that use,

the fact that it was removed after the pursuer's request, and that Mr Frame has

confirmed that the defender will not use the word "Tomatin" in isolation (but will

always use the defender's full name), in my view such an application would have been

bound to fail. Nor do I accept that that instance or the bland references in the

defender's promotional materials about the distillery "on its door step" justifies the

pursuer's contention that this constitutes the defender "piggy backing" on the pursuer's

Marks, or signals an intention on the part of the defender to try to benefit by association

with them. The pursuer has in my view failed to establish any "use", which is the

starting point for the first part of condition 5. The effect of the pursuer's approach is to

invite the Court to speculate to an impermissible degree about the nature of the

defender's retail or other offers of goods and services. On the evidence led, it is simply

not possible to form any view with the requisite degree of certainty as to what the

nature of the defender's goods and services falling within the Additional Classes will

be. In my view, the pursuer has not established that the defender's use meets the test

the CJEU articulated in the second passage of Céline quoted above (at para [264]).

[279]

Returning to the manner in which the pursuer sought to frame this argument,

while the pursuer relied on the inverse relationship between conditions 5 and 6 (see

para [266], above), these separate conditions cannot be so conflated that one (the need to

165

prove a degree of similarity in relation to the goods and services, respectively, of the

holders of the mark and of the sign) is subsumed in the other (the need to pr ove identity

as between the mark and the sign). The pursuer has therefore failed to satisfy

condition 5.

Condition 4

[280]

While my determination on condition 5 is fatal to the pursuer's case of infringement

of this statutory ground, it is appropriate that I express my view on the remaining

conditions in the event this cases goes further. No opinion in a commercial action should be

challengeable on the grounds of an absence of findings or reasons.

[281]

The pursuer contends that the dominant feature of all of its Marks and the Sign is the

word "Tomatin". As between the Original Mark and the Sign, there is identity. It contends

that in making a comparison between the 2018 Figurative Mark and the Sign, with the

exception of the letter "a", the font of the word "Tomatin" is very similar; both use block

capitals of consistent size and consistent spacing, and each is situated under a pictorial

element. The similarities are apparent on visual, aural and conceptual levels.

[282]

The pursuer also refers to the defender's name ("Tomatin Trading Company") and

its website, "tomatintrading.co.uk". In respect of the defender's name, the pursuer's

submission is that the words "trading company" are purely descriptive (although it also

contends that they are not an accurate descriptor of the defender's business) and do not add

anything to the word "Tomatin". Under reference to the case of AAH Pharmaceuticals v

Vantagemax ([2003] ETMR 18 ("AAH Pharmaceuticals")), where the court held (at

paragraph 44) that the word "Rewards" in the defender's sign "Vantage rewards" was

wholly descriptive and therefore the defender's sign was identical to the mark ("Vantage"),

166

the pursuer urges a like approach to disregard the words "trading company". It makes a

similar argument in respect of the defender' website. It contends that in the defender's Sign

the dominant element is the word "Tomatin" and the words "trading company" play only a

"very minor part of the assessment... as a whole". On this approach, in which the

defender's Sign is effectively reduced to "Tomatin", it contends that the defender's Sign is

identical to and infringes its Word Marks.

[283]

In reply the defender submits that the average consumer normally perceives a mark

as a whole and does not proceed to analyse its various details. (This proposition is

uncontroversial.) The defender accepts that the common element in the pursuer's Marks

and the defender's Sign is the word "TOMATIN". However, the defender contends that this

is a geographical location in Scotland and, in the context of the 2018 Marks where there is no

acquired distinctiveness in relation to those goods and/or services, the common element lies

in a word that is capable of being descriptive of the geographical origin of the goods and/or

services in question.

[284]

The defender also submits that the differences between the pursuer's Marks and

defender's "Tomatin Trading Company" Sign are sufficient to enable them to be easily

distinguished. The defender submits that in disregarding the other elements of the

defender's Sign reducing it to the word element "Tomatin" the pursuer has fallen into

legal error by focusing on the (supposed) dominant element of the defender's Figurative

Sign ("Tomatin") to the exclusion of its other features, but which is not the correct approach.

Rather, the defender argues that, as it is not the case that the other components of the

defender's Sign are not negligible, it is not permissible to make the comparison solely on the

basis of the dominant elements (as it says the pursuer has done).

167

[285]

In considering the defender's Sign, I begin with the defender's submission that

"Tomatin" would be understood as a geographical indication of where the defender's goods

and services will be provided. This is an available reading, having regard to my findings on

the issue of Tomatin as a place name, and that its reputation as a convenient stopping place

subsists for the modern traveller. While in submissions the pursuer sought to draw an

absolute distinction between the village and the junction, this is not consistent with the

weight of the evidence. The boundaries of Tomatin village were not defined. It was

described as elongated along the line of the old A9 which extended to the junction. The

terms of some of the media coverage also reflect the blurring of distinctions between "the

village" and "the junction"; on occasion, "Tomatin" was understood as encompassing the

junction and on other occasions the junction was specifically referred to.

[286]

Accordingly, while there is clearly a common element (the word "Tomatin") as

between the pursuer's 2018 Figurative Mark and the defender's Sign (being the word

"Tomatin"), in the latter it is descriptive of the geographical origin of the goods and/or

services to be supplied. In the defender's Sign "TOMATIN" is used in conjunction with the

words "TRADING COMPANY". On this point, I accept the defenders submission that the

case of AAH Pharmaceuticals, cited by the pursuer, is distinguishable, and that the words

"trading company" are not descriptive in the same manner as "Rewards" was descriptive of

an incentive scheme. Those words therefore do not fall to be disregarded.

[287]

Approaching this as the average consumer would, and considering the defender's

Sign as a whole, in my opinion the average consumer would read the word Tomatin in

conjunction with Trading Company as a geographical indicator of where those goods and/or

services are provided by the defender in the course of its business (or "trading").

168

[288]

In relation to the pursuer's focus on the word "Tomatin" in the defender's Sign, it

does so for the obvious reason that it is the same word as used in its Marks: they are

obviously also aurally identical, but if the pursuer succeeds in effectively reducing the

defender's Sign to the word "Tomatin", it strengthens it case for the purposes of the

comparison of the Marks and the signs (which is condition 5 for a case under section 10(3) as

well as condition 4 for the purposes of section 10(2)). However, unless the other elements of

the defender's Sign are negligible, the pursuer will fall into legal error in disregarding these

other elements.

[289]

I turn to consider these other elements, particularly the figurative elements of the

Sign and the 2018 Figurative Mark, before addressing the question of their similarity or

identity. The average consumer normally perceives a mark as a whole and does not proceed

to analyse its several elements. In respect of the pursuer's 2018 Figurative Mark, the

pursuer's witnesses emphasised the heraldic significance of the rampant lion and the

symbolic meaning of a hogshead, as collectively conveying status and prestige. This is

complex imagery, commensurate with the sense of antiquity or of history (invoked by the

"Estd" and "1897" which embrace the heraldic and other insignia) the pursuer is striving for.

By contrast, the figurative element of defender's Sign, being the double-T image

surmounting the Tomatin word element of the defender's Sign, could not be more different

in its pared back style and in what it seeks to invoke. It is striking, spare and graphically

sharp and unfussy. The apex formed by the double-T evokes a place of shelter or an old-

style trading post, a reading that is supported by the words "Trading Company"

immediately below the word and repeated in full, as "Tomatin Trading Company"

immediately below, and on the evidence of Mr Frame was intentional.

169

[290]

The defender's Sign is a complex sign, composed of both word and figurative

elements. In my view the average consumer would perceive several elements of the

defender's Sign as prominent. While the word "Tomatin", as it appears in the pursuer's

Marks and in the defender's Sign, has visual similarities in the use of block capitals, fonts

with san serif elements, and it is aurally identical, the average consumer undertaking a

global assessment would also have regard to the other words ("Trading Company" in the

defender's Sign) and their respective figurative elements. In my view, the average con sumer

would consider the figurative element of the defender's Sign to be distinctive and to

contribute to the overall impression of the defender's Sign. Neither of those elements can

properly be said to be negligible. Accordingly, it is not permissible to compare only the

dominant elements of the defender's Sign and the 2018 Figurative Mark. In disregarding

these other elements, the pursuer falls into the legal error the defender described.

[291]

Turning to the question of whether the pursuer's Marks or the defender's Sign are

identical with or similar to each other, in light of the foregoing, in my view, the average

consumer undertaking a global appreciation, and making its assessment in accordance with

the guidance noted above, would readily distinguish between the defender's Sign and the

pursuer's 2018 Figurative Mark in such an assessment. The average consumer would not

conclude that these were identical or similar. I find that the defender's Sign is not identical

with or similar to any of the pursuer's Marks, considered individually. Accordingly, this

condition of the statutory cases (being condition 4 for the case under section 10(2) and

condition 5 for the case under section 10(3)) is not met.

170

Condition 6 of section 10(2): Guidance on the likelihood of confusion

[292]

The final condition for the purposes of establishing an infringement under

section 10(2) is condition 6: the likelihood of confusion. It also is one of the relative grounds

for refusal of registration under section 5(2) of the Act. The following legal principles apply

in determining whether there is a likelihood of confusion on the part of the public for the

purposes of both of these sub-sections:

Although the test is by reference to the "ordinary consumer" or "average

consumer" the issue is one for the judge: Interflora v Marks and Spencer [2012] EWCA

Civ 1501, [2013] FSR 21 ("Interflora (No 1)"), paragraphs 44, 50 and 73. The specified

consumers are a legal construct or normative benchmark and, for ordinary goods

and services, the court should put itself in the position of the average consumer: Jack

Wills Ltd v House of Fraser [2014] FSR 39 ("Jack Wills"), paragraph 63; Interflora (No 2),

paragraphs 113-115.

The assessment of the likelihood of confusion must be appreciated globally,

taking into account all of the relevant factors (CCHG Ltd t/a Vaporized v Vapouriz Ltd

2017 SLT 907 ("CCHG Ltd") at paragraph 114). In particular:

(a)

The matter must be judged through the eyes of the average consumer

of the goods or services in question, who is deemed to be reasonably well

informed and reasonably circumspect and observant, but who rarely has the

chance to make direct comparisons between marks and must instead rely

upon the imperfect picture of them he has kept in his mind, and whose

attention varies according to the category of goods or services in question

(See also Specsavers at paragraph 52);

171

(b)

The average consumer normally perceives a mark as a whole and does

not proceed to analyse its various details;

(c)

The assessment of the overall impression of a mark on the average

consumer requires an analysis of the components of a sign and of the relevant

weight of these components in the perception of the average consumer;

(d)

The visual, aural and conceptual similarities of the marks must

normally be assessed by reference to the overall impressions created by the

marks bearing in mind their distinctive and dominant components, but it is

only when all other components of a complex mark are negligible that it is

permissible to make the comparison solely on the basis of the dominant

elements;

(e)

It is appropriate to examine the objective conditions under which the

goods may be present on the market to assess the weight to be given to

visual, aural and conceptual similarities of the marks;

(f)

The overall impression conveyed to the public by a composite trade

mark may, in certain circumstances, be dominated by one or more of its

components;

(g)

Beyond the usual case, where the overall impression created by a

mark depends heavily on the dominant features of the mark, it is quite

possible that a particular element corresponding to an earlier trade mark may

retain an independent distinctive role in a composite mark, without

necessarily constituting a dominant element of that mark;

172

(h)

A lesser degree of similarity between the goods or services may be

offset by a greater degree of similarity between the marks, and vice versa

(See

also Specsavers at paragraph 52);

(i)

There is a greater likelihood of confusion where the earlier mark has a

highly distinctive character, either per se or because of the use that has been

made of it;

(j)

Mere association, in the strict sense that the later mark brings the

earlier mark to mind, is not sufficient;

(k)

The reputation of a mark does not give grounds for presuming a

likelihood of confusion simply because of a likelihood of association in the

strict sense;

(l)

If the association between the marks causes the public to wrongly

believe that the respective goods or services come from the same or

economically linked undertakings, there is a likelihood of confusion (Comic

Enterprises Ltd v Twentieth Century Fox Film Corp [2016] ETMR 22 at paragraph

79).

(3)

Where a mark is a composite mark, eg comprising both graphic and word

elements, it should be compared against the other mark as a whole: the assessment

of similarity between the two marks ought not to be done on the basis of one

component of a composite mark alone.

Consideration of condition 6: a likelihood of confusion

[293]

The pursuer's contention that there would be confusion was based on three factors:

the similarity between the Marks and the Sign, the defender's proposed use of the name

173

"Tomatin" in association with the Development, and the physical proximity of the Site and

the Distillery. The pursuer also led evidence of a handful of informal contacts it had had,

via social media, calls or contact with employees. So, for example, Mr Eunson produced a

copy of a WhatsApp message, though he could not say what was in the mind of the sender.

The WhatsApp message, accompanied by the smiling/crying emoji face, may fairly be

construed as gentle joshing and not indicative of genuine confusion. The few contacts

Mr Bremner described the pursuer receiving were in the nature of cold-calling by companies

seeking business from the pursuer; they were not seeking to avail themselves of the facilities

of either the pursuer or the defender. In my view, this evidence was wholly unpersuasive in

establishing that there was any actual confusion (though condition 6 does not require proof

of any actual confusion). Even considering this evidence collectively, it was of minimal

import and I give it no weight.

[294]

In relation to the appearance of the Distillery or its physical proximity to the

Development, the evidence on this was very thin, and comprised of no more than the

subjective views of several of the pursuer's witnesses. While several of the pursuer's

witnesses referred to the pagoda-like feature of the Development, Ms Masson's evidence

being typical, that element no longer features in the design for which planning consent was

granted. The design of the Development does not contain any feature distinctive of a

distillery. In respect of the other feature the pursuer founds upon, in respect of the

similarity in the building materials, I give this little weight as it is not uncommon for a new

development to seek to blend in with existing built forms, using common materials

reflecting the local vernacular.

[295]

In terms of proximity, on the evidence, the entrance to the Distillery and the

Development are a few hundred metres apart and there is a prominent sign at the entrance

174

to the Distillery. (Mr Bremner's assertion that they were only 15 metres apart was plainly

incorrect.) The signage visible from the A9 indicates the existence of the Distillery and

Visitor Centre, and the sign at the T-junction onto the old A9 clearly identifies in their own

right both the Distillery and the Visitor Centre (see above, at para [52]). In the event that the

dualling of the A9 takes place by the time the Development is open for trading, then the

visitor coming off the A9 will pass the Development first. Even if the visitor intending to

visit the Distillery inadvertently turns into the Development (on the present configuration of

the roads), it will be patent in a very short space of time that the wrong destination has been

reached. Accordingly, the features the pursuer founds on are unlikely to have even a

minimal impact in terms of confusion.

[296]

In respect of the use of the words the "Tomatin Trading Company", the average

consumer would understand "Tomatin" as the origin of the goods and services, as being that

of the defender at its Development based in or near the village of Tomatin. The differences

between the pursuer's 2018 Figurative Mark and defender's "Tomatin Trading Company"

sign are sufficient to enable them to be easily distinguished, such that there is no likelihood of

confusion. It is therefore of no moment that (as the pursuer submitted) there will be no

opportunity to compare the Marks and Sign side-by-side.

[297]

The issue of the likelihood of confusion is not approached in the abstract, but

through the eyes of the average consumer. In my view, it is relevant to consider the

attributes of the average consumer, being in this case the single malt whisky aficionado or

single malt whisky explorer. On the experts' evidence, that is an individual with a relatively

sophisticated understanding or knowledge of the whisky market, as opposed to the general

public who are consumers of blended whiskies. Indeed, the very attributes of this kind of

consumer - of being an aficionado or explorer - are suggestive that this kind of consumer is

175

discerning and relatively knowledgeable about the product it appreciates or is exploring,

and of its typical presentation as a product. Moreover, it may be inferred that, given the

nature and price points of the different expressions of single malts, a single malt whisky

aficionado or single malt whisky explorer consumer makes such a purchase with a moderate

degree of intentionality, which may be contrasted, for example, with the more casual

purchases of everyday items such as soap or cereal. It is for these reasons that,

notwithstanding the factors the pursuer founds on, I conclude that the average consumer is

unlikely to be confused.

[298]

Finally, even if I had found that the pursuer had otherwise satisfied condition 6,

there is a more technical difficulty facing the pursuer: the global assessment to be made for

the purpose of condition 6 includes the objective conditions under which the goods and

services are offered. The fact that this is an unbuilt Development where no final decision

has been taken about the goods or services to be offered or how they will be presented,

renders any objective comparative assessment impossible. The pursuer did not provide any

compelling reply to persuade me that this was not fatal.

[299]

Accordingly, for these reasons, the pursuer has failed to satisfy condition 6.

Conclusion on ground of infringement under section 10(2)

[300]

Having failed to establish conditions 4, 5 or 6, the pursuer's case that there has been

or will be an infringement under section 10(2) of the Act fails.

The pursuer's claim of infringement under section 10(3)

[301]

The pursuer submits that, having regard to the definition of goodwill given by

Lord MacNaughton in IRC v Muller & Co's Margarine [1901] AC 217 ("IRC") the evidence

176

demonstrates that the pursuer has built up significant goodwill in its use of the Marks; that

reputation exists; that the defender intends to use the word "Tomatin" and the Figurative

Sign noted above in the course of its business, and that the pursuer does not consent to this.

In relation to the issue of whether use of the Sign gives rise to a link with the Marks, it

referred to the arguments in relation to similarity and confusion and it is noted th at the

requirement for "a link" requires less than the confusion needed for infringement under

section 10(2).

[302]

In considering the pursuer's claim under this ground, I begin by noting that in terms

of section 10(3) of the Act, a person infringes a registered trade mark if he uses in the course

of trade a sign which is identical with or similar to the trade mark, where the trade mark has

a reputation in the United Kingdom and the use of the sign takes unfair advantage of, or is

detrimental to, the distinctive character or the repute of the trade mark. It will be apparent

that there is an overlap between some of the conditions required to establish a claim under

section 10(2) and one under section 10(3). However, as noted above (at para [259]) in terms

of the conditions specific to a claim under section 10(3), one of these relates to reputation. I

propose to deal first with that issue, before turning to the other conditions which require to

be met if a claim for infringement under section 10(3) is proved.

[303]

The degree of knowledge or reputation is considered to be met when the mark is

known by a significant part of the public in the United Kingdom concerned by the goods or

services covered by that trade mark. The reputation of a trade mark must be established in

the relevant territory in relation to the relevant section of the public as regards the goods or

services for which the mark is registered. In examining whether this condition is fulfilled, the

court must take into consideration all the relevant facts of the case and include the market

share held by the trade mark, the intensity, geographical extent and duration of its use, and

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the size of the investment made by the undertaking in promoting it, all in the relevant

territory.

[304]

It is in this context that my findings on the evidence of reputation (beginning at para

[243], above) are relevant. The existence of a reputation is a critical ingredient to a claim

under section 10(3). As the CJEU observed in Marca Mode v Adidas [2000] ETMR 723 (at

paragraph 36):

"art.5(2) of the Directive [which is equivalent to section 10(3)] ... establishes, for the

benefit of well-known trade marks, a form of protection whose implementation

does not require the existence of a likelihood of confusion". (Emphasis added.)

While it is correct that there is no requirement that the mark must be known by a given

percentage of the public (per the CJEU in General Motors v Yplon [1999] ETMR 950,

paragraph 25) and that the reputation need not exist in the public at large but can be a

specialised public (being the persons concerned by the products or services covered by the

mark), the pursuer must nonetheless prove this element for a claim under section 10(3).

[305]

I begin with the question of what proportion of the relevant public the pursuer must

prove to establish reputation. Mr Lake is of course correct that there is no requirement that a

producer must have a minimum percentage market share to establish the requisite

reputation for the purposes of a claim under section 10(3). There is no absolute minimum

which can be stated in percentage terms, as the assessment is a multi-factored and fact-

sensitive. For that reason it is not possible to fix a generally applicable threshold of

recognition which is decisive of whether or not there is repute, depending on whether the

market share of the trade mark holder falls above or below that threshold (Windsurfing

Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber [2000] 2

W.L.R. 205 ("Windsurfing Chiemsee") at paragraph 52). Many factors fall to be considered,

including, for example whether the relevant market is mature or emerging, whether it is

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crowded with competitors or relatively open, whether it is dominated by a few producers or

fragmented among many, and how long the trade mark holder has operated in that market.

That is why, on the case-law of the CJEU, the court must take into consideration all of the

relevant facts of the case, and which are likely to include the market share held by the trade

mark, the intensity, geographical extent and duration of its use, as well as the size of the

investment made by the undertaking, all within the relevant market (per General Motors Corp

v Yplon SA, cit supra, at paragraph 27).

[306]

The pursuer submits that proving reputation "is not a particularly onerous

requirement" (citing Arnold J in Enterprise Holdings Inc. v Europcar Group United Kingdom Ltd

[2015] ETMR 16). However, as subsequently explained by the UKIPO in The Reproline Trade

Mark, Application No: 00003202388, BL No: O/347/18, those comments were not made in the

context where a claimant had only a small or unquantified share of the relevant market, as is

the case here. In my view, the pursuer's reliance on Arnold J's comment (made without

reference to their context), is inconsistent with the case-law of the CJEU that, qualitatively, a

trade mark holder must establish a "significant" part of the relevant public in the relevant

territory concerned with the products or services covered by its mark (per General Motors

Corp v Yplon SA, ibid; cf the comments of the Irish Patents Office in T.M.R. Restaurant Ltd's

Application, [2013] ETMR 37 at paragraph 56 ("the reputation which s. 10(3) seeks to protect

is that of an extremely well-known trade mark..."(emphasis added))). There is a further

reason I do not accept the pursuer's submission on this point. Section 10(3) affords

additional protection to proprietors of well-known trade marks, who are not required to

prove a likelihood of confusion, as is required for a claim under section 10(2). The

application of a low threshold risks obliterating that important distinction between these

two provisions.

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[307]

I next consider the relevant market within which a significant reputation is to be

established, which is identified by reference to the goods or services covered by the Marks

(see General Motors Corp v Yplon SA, cit supra, at paragraph 24). Neither party contended that

the pursuer's products or services were for mass market consumption, and for which the

relevant public would be the public at large. Accordingly, in this case, I proceed on the basis

that the relevant public is limited to the specific purchasers, and potential purchasers, of the

pursuer's products and services, as well as those members of the public that may only come

in contact with the Mark indirectly to the extent that such consumer groups are also targeted

by the goods or services in question. As the pursuer's Marks are registered for different

classes, they must be considered in turn.

[308]

Starting with the pursuer's Original Word Mark, this is registered for class 33, Scotch

whisky and, therefore, the relevant market is the United Kingdom-wide adult Scotch

whisky-drinking public (see Speciality Drinks Ltd v European Union Intellectual Property Office,

case T-250/15, at paragraph 26). Under reference to observations of the UK Intellectual

Property Office in Fisher's Application No: 00003156611 (BN No: O/647/17 at paragraph 17)

made in response to a submission to it focusing on the quality of "craft" (in respect of beer),

that the specifications to which regard is had are those applied for and registered, the

defender contends that the pursuer falls into error, to the extent that it focuses on the single

malt whisky segment within that larger market (eg in paragraph 47 of the pursu er's

principal written submissions). I accept that submission as well-founded. It is only

reputation in the wider market for Scotch whisky that is relevant.

[309]

As will be apparent from the evidence noted relevant to reputation, this was directed

almost exclusively to the single malt whisky sector, which is a small segment within that

wider market. The weight of that evidence pointed overwhelmingly to the conclusion that

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the pursuer's "Tomatin" brand is not well-known even to the average consumer of Scotch

whisky in the United Kingdom. It is not known by a significant part of the general whisky-

drinking public, which is the relevant market. The evidence has established that the

reputation of the pursuer's "Tomatin" brand has not extended beyond the limited class of

consumer ("the aficionado") of the pursuer's products. I found Mr Russell's evidence on

this matter compelling and persuasive. On the evidence of Mr Russell, whose evidence on

the question of reputation I prefer to that of Mr MacLean on this topic, the pursuer does not

have a reputation even amongst single malt whisky aficionados. Furthermore, on his

evidence, the pursuer was not known as a brand by the broader whisky-drinking public and

any attempt to compare the pursuer's reputation with that of the market-leaders in that

wider market was "absurd" (a matter on which Mr MacLean agreed). He considered the

kinds of factors identified in the case law as relevant (see General Motors Corp v Yplon SA, cit

supra, at paragraph 27, , to the extent there was evidence of these matters. His reasons for his

opinion were cogent, and supported by the evidence of how a producer would develop its

reputation (eg mass distribution and advertising), and which the pursuer did not at present

employ. Notwithstanding the ambitions and subjective views of the pursuer's marketing

team, there was no independent, or indeed any other, evidence that the pursuer's reputation

had penetrated the consciousness of the wider public who might consume Scotch whisky.

The pursuer's Original Word Mark has not attained this level of brand awareness because of

its limited marketing activities and the fact that the pursuer has traditionally sold its

products in specialist retail outlets and not supermarkets. Moreover, the pursuer has

produced no other evidence to establish any reputation in the relevant wider United

Kingdom market for Scotch whisky. To the extent that the pursuer relied on the evidence of

its ambitions to grow its market share, that can only remain a matter of speculation and it is

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not relevant to the question of whether the pursuer has provided the requisite reputation.

On the totality of the evidence I find that the pursuer has not demonstrated that it has a

protectable reputation for the relevant section of the public for the goods for which the

Original Word Mark was registered, as required for a claim under section 10(3).

[310]

What of the pursuer's reputation in the Additional Classes, being the classes for

which the 2018 Marks were registered? On the evidence, the location from which these were

offered was essentially confined to the Visitor Centre. In the present context - I analyse the

evidence about the pursuer's offerings under these classes below, in my consideration of the

bad faith ground of invalidity it suffices to observe that on no view of the evidence could it

be found that there is any reputation in respect of the Additional Classes, however their

specific markets were defined (and which was not addressed in evidence or in submissions).

To the extent that the pursuer may have tried to assimilate these classes into class 33 with

the same market for class 33 (because attractive to the same consumer), this is both

misconceived in law and, in any event, fails on the evidence given my findings about the

want of the requisite reputation under class 33.

[311]

The pursuer has therefore failed to prove protectable reputation in respect of any of

the goods or services falling within the Additional Classes and for which the 2018 Marks are

registered, as required to engage section 10(3).

[312]

That finding is sufficient to reject the pursuer's claim under section 10(3).

Nonetheless, it is appropriate that I address parties' submissions on the other conditions. In

respect of condition 8, the pursuer submits that the defender's use of the Sign in the

circumstances of the proposed Development will take unfair advantage of the distinctive

character and repute of the Marks, and that it was relevant to have regard to the deliberate

intention apparent from the defender's promotional materials to take advantage of the

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pursuer's goodwill. (These are the passages where the defender refers to the distillery "on

the defender's doorstep", without naming the Distillery itself.) It relied on the evidence of

the calls and social media messages, which it submits already demonstrate that members of

the public erroneously believe that the defender's Development is associated with the

pursuer and indicate that the distinctive character of the pursuer's Marks is being eroded.

[313]

In relation to due cause, the pursuer has made use of the word "Tomatin" in its

business for a considerable time in a business in which the use of distillery names is

important. The pursuer has invested significant sums of money over several years in

promoting the Marks

and, as noted above, has established a reputation associated with the

Marks. Conversely, it argues that there is no reason why the defender requires to use the

name "Tomatin" for its business. The manner in which it is used in the name "Tomatin

Trading Company" is not such that it identifies origin. It has no existing reputation or good

will in the word. It submitted that, on balance, the defender has no legitimate basis for the

use of the Sign and it is without due cause. It also maintained that section 11(2) of the 1994

Act did not provide a defence.

[314]

In determining the pursuer's claim under section 10(2), I have already addressed

conditions 4 and 5, which correspond with conditions 5 and 6 to establish infringement

under section 10(3) (see above, at para [259]), and condition 6 (which is not dissimilar from

the assessment of condition 7 for a claim under section 10(3)). To the extent that there was a

difference between condition 5 of a claim under section 10(2) and the corresponding

condition (condition 6) of a claim under section 10(3), the latter omits the requirement that

the goods or services are "identical to or similar with" the trade mark. It requires only proof

of the use of the sign in relation to goods and services simpliciter. I have already concluded

that the pursuer has failed to establish the requisite use (having considered that separately

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from my consideration from the second part of condition 5 of section 10(2), namely, of the

question of identity between the goods and services). As the pursuer relied on the same

evidence and arguments, it follows that my determination of those conditions falls to be

applied mutatis mutandis to the pursuer's case under section 10(3).

[315]

In respect of condition 7, the pursuer must establish that the relevant public will

make a link with the pursuer's Marks when confronted with the defender's "Tomatin

Trading Company" Sign. Whether such a link exists must be assessed globally taking

account of all relevant factors, including the degree of similarity between the respective

marks and between the goods or services, the extent of the overlap between the relevant

consumers for those goods or services, and the strength of the earlier mark's reputation and

distinctiveness.

[316]

In my opinion, the relevant public will not make a link between the two signs on the

facts in this case. In light of my determination of conditions 4 and 5 for the pursuer's claim

under section 10(2), that there is not the requisite identity or similarity either between the

pursuer's Marks and the defender's Sign or between their respective goods and services, it

follows that the relevant public will see the parties' respective signs as being different. The

relevant public, who will be consumers of Scotch whisky, will appreciate that the defender's

Sign is used in relation to different goods and services than those offered by the pursuer.

This may be tested by considering those of the pursuer's customers who may wish to visit

the Visitor Centre. They will realise that Tomatin is the name of the local area (such as by

seeing the local signage); they are likely to see that the defender is using "Tomatin" as a

descriptor for the location of the Development (once built) and will be able readily to

distinguish it from the Distillery, which is separately sign-posted. For those customers who

wish to purchase the pursuer's goods (which, in this context can only be the pursuer's single

184

malt whiskies) other than by visiting the Visitor Centre (eg online, in specialist retail units or

abroad), they w ill have no cause to link the defender's Sign with that of the pursuer's Marks

or goods or services. In my view, there is force in the defender's submission that it is

implausible that the defender would seek to draw a link in the mind of consumers with

the pursuer's business by using "Tomatin" on a pot of strawberry jam. (The defender

contends that the pursuer's hostile reading of the photograph of a pot of strawberry jam

bearing the word "Tomatin" (and which was removed from its website 2 years ago)

demonstrates the need for invalidation of the 2018 Marks in terms of section 3(1)(c)

(descriptive of geographical origin of goods or services) and section 3(3)(a) (contrary to

public policy) of the 1994 Act.)

[317]

On the evidence, I am not persuaded that the average consumer, who is reasonably

well informed and reasonably circumspect, would call the pursuer's Marks to mind when

confronted with the defender's Sign. This is so, particularly having regard to the attrib utes

of the average consumer of the pursuer's single malt whisky (which attributes I have

discussed in my consideration of condition 6 of the pursuer's claim under section 10(2)).

Accordingly, I am not persuaded that the pursuer has established any link in the mind of the

consumer, as required by condition 7. It follows that the pursuer has not established that the

defender's use of its Sign will deceive consumers, whether the average consumer of the

pursuer's goods and services, or the tourist and other traveller the defender wishes to

attract.

[318]

Even if I had found a link, the pursuer has not also established, as it must, that any

link produces the relevant injury (of either detriment or unfair advantage). I did not

understand the pursuer to rely on detriment to repute (see the three types of injury for

condition 8, above, at para [259]). In terms of the two other forms of injury, the pursuer

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predicates its case that there is "detriment" to the distinctiveness of the pursuer's Marks or

that the defender is taking "unfair advantage of the distinctive character of its Marks, on its

submissions as to the similarity of the Marks and the Sign and the likelihood of confusion.

There is no evidence that any link (had it been established) would have affected the

economic behaviour of the relevant consumer (Intel Corp v CPM UK Ltd [2009] ETMR 13 at

paragraph 32) and nothing in its submissions persuades me that the pursuer is at risk of any

erosion of the distinctiveness of its Marks. In respect of unfair advantage, I have already

addressed the pursuer's reliance on the evidence of the defender displaying casks with the

"Tomatin" name on its website. These were also removed from the website more than

2 years ago, at the pursuer's request. At most, the defender used this image to reference

other attractions in the area (not itself) and its use without first seeking the consent of the

pursuer was naïve but not borne out of any other motive. I do not accept that this justifies

the conclusion that the pursuer is "piggy-backing" on the defender's reputation or Marks (as

several of the pursuer's witnesses asserted) or constitutes the defender taking unfair

advantage.

[319]

I am satisfied on the whole evidence, that the defender's use does not give rise to any

detriment. Even assuming the Marks acquired the requisite repute or the 2018 Marks (or any

activities carried out under them) had acquired any distinctiveness, the defender's use of

"Tomatin" or of its Sign in relation to the Development does not constitute taking any unfair

advantage in relation to them.

[320]

Finally, the pursuer must establish that the defender's use was without due cause

(condition 9 of a claim under section 10(3)). The pursuer's essential point was that there was

no "objective justification" for the defender's use of the Sign, but this submission falters,

given my determination of the issue of Tomatin as a place name and my acceptance of the

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evidence that it is reasonable and in accordance with honest commercial practices to use the

location (Tomatin or the Tomatin junction) as part of its name and in association with the

Development.

[321]

For these reasons, I find that the pursuer has failed in its claim of infringement under

section 10(3). Before turning to the pursuer's third ground of claim, passing off arising at

common law, I first address at the remaining issue relevant to the statutory grounds;

namely, the defence under section 11(2).

Defence under section 11(2) of the Act

[322]

My findings that the pursuer has failed in its claims for infringement based on the

statutory grounds supersedes the question of whether the defender needs to establish the

defence under section 11(2). In the event that I am wrong on either of my determinations of

the statutory grounds, it is right that I determine this issue.

[323]

Reading short, section 11(2), which is quoted above at para [43], provides that a

registered trade mark is not infringed by the use of signs or indications which concern the

geographical origin of the goods or services, provided that use is in accordance with honest

practices in industrial or commercial matters. The leading case of Samuel Smith Old Brewery

(Tadcaster) v Lee (t/a Cropton Brewery) [2012] FSR 7 ("Samuel Smith Old Brewery") provides a

helpful exposition of what section 11(2) requires, which I gratefully adopt. (What follows is

based on paragraphs 114 to 117 of that case.) The requirement to act in accordance with

honest practices in industrial or commercial matters constitutes in substance the expression

of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor . It

provides a non-exhaustive list of factors which may be relevant to the issue of whether use is

in accordance with honest practices:

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whether the defender knew of the existence of the trade mark, and if not

whether it would have been reasonable for it to conduct a search;

whether the defender used the sign complained of in reliance on competent

legal advice based on proper instructions;

the nature of the use complained of, and in particular the extent to which it is

used as a trade mark for the defender's goods or services;

whether the defender knew that the trade mark owner objected to the use of

the sign complained of, or at least should have appreciated that there was a

likelihood that the owner would object;

whether the defender knew, or should have appreciated, that there was a

likelihood of confusion;

whether there has been actual confusion, and if so whether the defender

knew this;

whether the trade mark has a reputation, and if so whether the defender

knew this and whether the defender knew, or at least should have

appreciated, that the reputation of the trade mark would be adversely

affected;

whether the defender's use of the sign complained of interferes with the

owner's ability to exploit the trade mark;

whether the defender has a sufficient justification for using the sign

complained of; and

10)

the timing of the complaint from the trade mark owner.

The court should carry out an overall assessment of all the relevant circumstances and in

particular, should assess whether the defender can be regarded as unfairly competing with

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the proprietor of the trade mark. An important factor is whether the use of the sign

complained of either gives rise to consumer deception or takes unfair advantage of, or is

detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely

to qualify as being in accordance with honest practices. On the other hand, a mere likelihood

of confusion will not disqualify the use from being in accordance with honest practices if

there is a good reason why such a likelihood of confusion should be tolerated.

The defender's position

[324]

The defender, who has the onus of proving the defence, contends that it has

established this, as its use of "Tomatin" and/or "Tomatin Trading Company" Sign is

descriptive of the geographical origin of the goods or services being provided. Accordingly,

there is no trade mark infringement in respect of the 2018 Marks. It submits it has used the

likelihood of confusion, this will not disqualify the use from being in accordance with honest

practices if there is a good reason why such a likelihood of confusion should be tolerated

(Samuel Smith Old Brewery, at paragraph 117). The good reason in this case is that the

defender requires to use its Sign to indicate where its goods or services are provided.

The pursuer's position

[325]

The pursuer argues that "Tomatin" in the defender's Sign is not performing a

descriptive function. It relies on arguments it had advanced on the issue of whether Tomatin

is a place name. It also submits that the name, "the Tomatin Trading Company", is "highly

artificial" as there is no "trading company" to be located in Tomatin, and that the defender's

likening it to the Hudson Bay or East India Companies is "bogus". It submits that even if

189

the location was thought to be in any way material, there was "no requirement" for it to be

identified by way of Tomatin as opposed to any other descriptive term and therefore there

was no "necessity or cause" for the defender's use of Tomatin.

[326]

In relation to what it contends is a lack of honest practices, the pursuer quotes the

summary of the principles on what constitutes honest practices set out by Arnold J (as he

then was) in Samuel Smith Old Brewery (at paragraph 118) and in Sky v SkyKick [2018] EWHC

155 (Ch), [2018] ETMR 23 ("SkyKick (2018 Ch)") (a further decision of Arnold J) (at

paragraphs 327 to 331). It relies particularly on the consideration of whether the use of the

Sign gives rise to deception, and it contends that consumers "will be deceived" if the

defender uses the Sign, especially the figurative sign. It again relies on what it says are the

defender's illegitimate attempts to associate the Development with the Distillery (based on

the marketing materials already noted) and that the defender has chosen a name which is

only one descriptive word different from the pursuer's full business name. It submits that

the figurative element of the Sign will, when seen from the road, "bear an uncanny

resemblance to" the 2018 Figurative Mark. It also submits that the defender has failed to

establish any good reason why the confusion it says arises should be tolerated. Until the

change in 2018 to the defender' name, the Development had been called Juniper Village.

There is no other advantage obtained by the defender in the use of "Tomatin", (other than

the association with the pursuer's business), and "Tomatin" is not needed to add

attractiveness to the Development. It submits that, notwithstanding the statements in the

defender's business and marketing materials about passing traffic from the A9 being a

source of business, there is no evidence that use of the word "Tomatin" will bring that

advantage. Tomatin is not a tourist destination in its own right and the defender's business

and marketing materials did not refer to it as such.

190

[327]

It invokes a number of the factors identified from Samuel Smith Old Brewery, namely:

The references to the Distillery in the defender's plans and promotional

materials amply demonstrate the defender's awareness of it. Any reasonable

business person would be aware that it was likely that a whisky name would

be the subject of trade mark protection and, at the very least, it would have

been reasonable for the defender to have conducted a search;

There has been no evidence that the defender's use of the Sign is reliant on

legal advice;

When considering the nature of the use by the defender of its Sign, it is

appropriate to have regard to the fact that it will be used in close proximity

to the pursuer's premises and on buildings which replicate the architectural

vernacular of distillery buildings;

After rehearsing the chapters of evidence about the February 2018 meeting

and the business card said to have been presented by the defender, t he

pursuer submits that Mr Frame never mentioned at that time any intention

to use the defender's name in association with the Development (and, by

inference, nothing should be made of the fact that the pursuer did not then

object). It notes that the defender has persisted in using its name in

association with the Development, notwithstanding the pursuer's continued

objection. (The pursuer refers to its agents' communings which were around

May 2019. I have not troubled to record the little evidence there was of this,

or of the meeting between the parties in February 2019 (some of which may

be privileged));

191

It submitted that, having regard to the striking visual and conceptual

similarities between the 2018 Figurative Mark and the figurative elements of

the Sign, at the very least Mr Frame should have appreciated there was a

likelihood of confusion;

Although it accepted that there was only limited evidence of confusion, this

was not an indicator that the defender's conduct accords with honest

practices it was the result of the pursuer having taken prompt action when

they were aware of the defender's plans. Given that confusion "is likely to

arise", the quality of the Marks to be able to identify uniquely the pursuer's

products is lost; and

the defender has no justification or requirement to use its Sign.

Accordingly, upon an assessment of the overall circumstances, it is apparent the defender is

not acting fairly in relation to the pursuer's Marks, and is not respecting their legitimate

interests. The defender's conduct does not come within honest practices.

[328]

In reply the defender submits that "Tomatin" is performing a descriptive function,

namely identifying the location of the Development. Moreover, the use of "Tomatin" was

intrinsically linked to the strategic location of the Development and the tourism

opportunities the defender had identified. For the purposes of section 11(2)(b) it sufficed

that the use of "Tomatin" is capable of designating the geographical origin of the defender's

goods and services, and it mattered not that there may be other, more usual, signs or

indications for designating the same characteristics of the goods and services referred to in

the application for registration. The pursuer's contention is that the media coverage in

March 2018 did not emphasise the location of the Development. The pursuer's criticisms of

192

the defender's name (as "bogus") was irrelevant given that the defender was incorporated in

2010 and the pursuer only expanded its current offering at the Visitor Centre from 2012. In

relation to the defender's references in some of its marketing and business materials to the

proximity to the Distillery (even if not by name), it is not objectionable per se, any more than

references to other local or visitor attractions. In fact, the words "with one [ie a distillery]

right on our doorstep", pointed away from any association between the Distillery and the

Development. In relation to the question of whether the defender had legal advice, the

pursuer's agents sent the draft summons in May 2019 and, given that proceedings were not

raised until December 2019, it may be inferred that the defender's position was reliant on

legal advice. The defender makes the point that, in fact, the defender was not aware of the

pursuer's objection until after the pursuer had registered the 2018 Marks and which was

telling as to which party was acting in bad faith toward the other. Even if there were

confusion, which the defender did not accept, the good reason is that the defender needs to

identify the location from which its goods or services will be offered. In those circumstances

it was legitimate, reasonable and honest to use "Tomatin" in the name of the Development.

Consideration of the section 11(2) defence

[329]

Undertaking an overall assessment of all of the relevant circumstances and applying

the guidance provided in Samuel Smith Old Brewery and in the SkyKick cases, I have no

hesitation in finding that, had it required to rely on it, the defender would have established

the defence available under section 11(2). I have already dealt with the substance of the

factors the pursuer relied on. I refer to my findings, above, on Tomatin as a place name. Nor

is there anything nefarious or dishonest arising from the timing of the defender's decision to

change the name of the Development from "Juniper Village" to "The Tomatin Trading

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Company". On the defender's evidence, which was based in part on the advice in the MKA

Report of the need to use the location in the name of the Development, this was a key driver

for the defender to use Tomatin in the name of the Development. While the pursuer

disparaged Tomatin as a place, Mr MacLean accepted that it would be "reasonable" to use

"Tomatin" to identify the location of the Development. I agree. In my view this is

particularly so where some of the target consumers for goods and services to be offered at

the Development are tourists and other travellers; where the Development sits on the very

site of the former Little Chef/Freeburn Hotel, that is, at Tomatin junction, where hospitality

services (a hotel, and later a restaurant) were formerly provided; and where the defender's

proposed offering includes similar hospitality services (a restaurant and hotel). I am satisfied

that there are demonstrable advantages to the defender in using "Tomatin" to describe the

Development and its use is reasonable and accords with honest commercial practices.

[330]

I am not persuaded that the defender's use of the Sign would give rise to a link in the

mind of the average consumer between it and the pursuer's Marks. Nor do I accept that the

defender's use of its Sign will deceive consumers, whether the average consumer of the

pursuer's goods and services, or the tourist and other traveller the defender wishes to

attract. I am satisfied on the whole evidence, that the defender's use does not gives rise to

any detriment. Even assuming the Marks acquired the requisite repute or the 2018 Marks (or

any activities carried out under them) had acquired any distinctiveness, the defender's use

of "Tomatin" or of its Sign in relation to the Development does not constitute taking any

unfair advantage in relation to them. Furthermore, given my determinations that the Sign

and the Marks are not identical with or similar to each other, and that there is no likelihood

of confusion, the question of whether there is due cause to "tolerate "the confusion (another

of the SkyKick criteria) does not arise. Had that issue arisen, I would have regarded the

194

benefits of using "Tomatin" as the location of the Development, and which I have found to

accord with honest commercial practice to constitute a good reason why such a likelihood of

confusion should be tolerated.

[331]

On the whole matter, I reject the pursuer's submission that the defender's use is not

in accordance with honest practices in commercial matters. Had it required to rely on the

defence in section 11(2) if, in other words, the pursuer had established either of the

statutory grounds- its defence would have been made out.

Passing off

[332]

The parties were agreed that the constituent parts for a claim in passing off,

summarised by Lord Nimmo Smith in Gleneagles Hotels Ltd v Quillco 100 Ltd¸ 2003 SLT 812

("Gleneagles")(at para 33), are as follows:

The pursuer's goods or services have acquired a goodwill in the market and

are known by some distinguishing name, mark or other indicium;

There is a misrepresentation by the defender (whether or not intentional)

leading or likely to lead the public to believe that goods or services offered by the

defender are goods or services of the pursuer. Whether the public is aware of the

pursuer's identity as the manufacturer or supplier of the goods or services is

immaterial, as long as they are identified with a particular source which is in fact the

pursuer; and

The pursuer has suffered, or is likely to suffer, damage as a result of the

erroneous belief engendered by the defender's misrepresentation that the source of

the defender's goods or services is the same as the source of those offered by the

pursuer.

195

Of course, these principles are interlinked and the core principle underpinning an action

based on passing off is that a "man is not to sell his own goods under the pretence that they

are the goods of another man": Perry v Truefitt, (1842) 5 Beav 66, quoted by Lord Jauncey in

Reckitt & Colman v Borden [1990] RPC 341. In William Grant & Sons v Glen Catrine 2001 SC

901, the Lord President (Lord Rodger) approved a similarly compendious formulation of

Warrington LJ (as he then was) in Ewing v Buttercup Margarine Co Ltd [1917] 2 Ch 1

(at p 13).

[333]

On this issue, parties took matters lightly and essentially relied on the same evidence

elicited for the statutory grounds.

[334]

The pursuer noted, correctly, that as passing off is a ground arising at common law,

then the statutory defence in section 11(2) of the Act is not available, with the result that a

geographical place name can be distinctive and protectable (The Lochgelly Iron and Coal Company

Limited v John Christie and James Mungall (Lumphinnans Iron Company, (1879) 6 R.482 at p 486),

as can a distillery's use of a name (even if also a place name) as its own name (Highland

Distilleries Co. Plc v Spey Malt Whisky Distributors Limited,1985 SC 1, 4).

[335]

The pursuer submitted that for the purposes of passing off, which is ultimately

concerned with the protection of good will, it did not matter that the pursuer was not one of

the largest sellers of whisky, so long as it had developed a reputation under the "Tomatin"

brand such that there was goodwill in it. The pursuer founded on the long history of the

pursuer's sale of whisky under that name as establishing the requisite goodwill. In

asserting passing off, it relied on the proximity of the Development and the Distillery, the

dominance of the word "Tomatin" in the defender's Sign and its identity with the pursuer's

Marks, as instructing the potential for confusion. Under reference to the dictum of Lord Hill

Watson in John Haig & Co v Forth Blending 1954 SC 35 (at p 37) ("Haig & Co"), that:

196

"[n]o man has a right to sell his goods as though they were the goods of another, or,

to express this principle more fully, one man is not entitled to sell his goods under

such circumstances, by the name, or the packet, or the mode of making up the article,

or in such a way as to induce the public to believe that they are the manufacture of

someone else",

The pursuer submitted in the circumstances it noted that the defender would be engaging in

precisely this kind of inducement, if not stopped. It submitted that, even if the risk of

confusion was "slight" (eg as characterised by Lord Prosser in Dash v Philip King Tailoring,

1988 SC 87, "the likely result is that it could be thought that the pursuer had diversified and

was responsible for the [Development]". From this it posited that, in addition to damage to

the pursuer's goodwill, that some passing traffic might be diverted from visiting the

Distillery and instead buy souvenir items from the Development.

[336]

The defender's primary position was to rely on its submission that it is not supplying

goods and/or services under the "Tomatin Trading Company" sign at this time and,

accordingly, that the pursuer's claim for passing off cannot succeed. Its fall-back position, in

the event that the court was satisfied that the defender has supplied goods and/or services

under the "Tomatin Trading Company" sign or that the absence of such is not a bar to a

passing off action, may be summarised as follows:

The pursuer's protectable goodwill is restricted to its existing business (that

is, distilling, maturing and producing its single malt whisky under the "Tomatin"

brand as well as in its Visitor Centre and whisky tasting tours) but that it had no

goodwill in respect of most of the services included within the specification of the

2018 Marks;

That a misrepresentation by the defender must deceive a "substantial

number" of the pursuer's customers or potential customers (whom the experts

described as "single malt whisky aficionados") into purchasing the defender's goods

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and/or services in the belief that these were the goods or services of the pursuer (per

Morritt LJ in Neutrogena Corporation and Another v Golden Limited and another, L.J.

[1996] RPC 473);

In the context of assessing whether a "substantial number" of the customers

or potential customers are likely to be deceived by a misrepresentation, the absence

of a common field of activity between the two undertakings is an important and

highly relevant consideration (per Millet LJ in Harrods Limited v Harrodian School

Limited [1996] RPC 697 ("Harrods Limited"), pp 714-715, relying in part on the

observations of Stephenson JL in Stringfellow v McCain Foods (G.B.) Ltd

[1984] R.P.C. 501 at p 547, that "clear and cogent proof of actual or possible confusion or

connection, and of actual damage or real likelihood of damage" will be required

where the fields of trade of the passer off and the claimant are far removed (in the

sense of different) from each other. Where there was no or only a tenuous overlap,

the burden of proving the likelihood of deception and resulting damage is a heavy

one (Harrods Limited); and

In this case, the absence of a common field of activity is fatal to establishing a

likelihood of deception.

Consideration of the pursuer's claim of passing off

[337]

On this matter, I am persuaded that the defender's primary position is well-founded.

The fact that it is not offering goods and services under the Sign means that there is no

operative "representation" leading or likely to lead the public to believe that the defender's

goods and services are those of the pursuer. That is necessarily fatal to the pursuer's case of

passing off.

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[338]

Even assuming that, in the context of an action seeking an interdict based (as the

pursuer's is) on reasonable apprehension, it were permissible to consider a prospective

representation, the pursuer's claim for passing off founders as it fails to satisfy other

elements of such a claim. I accept the defender's submission that the pursuer's protectable

goodwill is restricted to its existing business and that, otherwise, the absence of a common

field of activity is fatal to the pursuer establishing a likelihood of deception. On the

question of good will, parties relied on the same body of evidence elicited for the purposes

of reputation and I refer to my findings on the pursuer's reputation, above. My findings in

the context of the pursuer's statutory grounds, of the absence of identity as between the

pursuer's goods and services and the defender's goods and services (assuming the latter are

sufficiently determinable), is apposite to the question of whether there is a common field of

activity. They are (or the defender will be) largely engaged in different businesses and

pursuing different customers. I accept the defender's submissions that the core offerin gs of

the Development (restaurant, hotel, bakery etc), many of which will have their own

branding, are not typically found at a distillery's premises or connected with a distillery.

Even if, superficially there will be an overlap (eg because one could buy a coffee or souvenir

items at both establishments), this is, at best, tenuous. While the pursuer also relied on the

proximity of the Development (to which it says passing traffic might be diverted), I have

also held that, by reason of the existing signage (which identify the Distillery at the junction

and T-junction) and other circumstances, there is no likelihood of confusion. Those findings

are apposite to the pursuer's case of passing off. I accept the defender's submission that the

defender's use of the "Tomatin Trading Company" Sign will not cause a substantial number

of the pursuer's customers (who will be consumers of single malt whisky or visitors to the

Distillery) to be misled into purchasing the defender's goods or services, believing that they

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are provided by the pursuer. Furthermore, there is no evidence to support the contention in

the pursuer's submissions that a proportion of those intending to visit the Distillery will

instead visit the Development. There was no evidence of actual confusion. (I have already

dealt with, and placed no weight on, the few social media posts or calls the pursuer elicited

as evidencing actual confusion.) There was no evidence of actual confusion, and I refer to

my findings on the small body of evidence the pursuer relied on (the social media messages

and calls) to evidence actual confusion.

[339]

On the totality of the evidence, the pursuer has not proved any misrepresentation,

much less one likely to deceive a substantial number of the pursuer's customers or potential

customers. To paraphrase Lord Hill Watson in Haig & Co, cited by the pursuer, there is

nothing in the circumstances which obtain here (be it proximity, the defender's Sign, the

goods and services to be offered by the defender or the manner in which they will be

presented) "as to induce the public to believe that they are" the pursuer's goods and

services. If the pursuer has failed to prove a likelihood of confusion, a fortiori it has not

proved a likelihood of deception. Finally, the pursuer has not proved any damage. To the

extent that it points to the alacrity of its raising these proceedings to explain that, it has

nonetheless not demonstrated that there is a real or well-founded risk of damage to its

goodwill.

[340]

For the foregoing reasons, I find that the pursuer has failed to prove that the

defender has or will pass off its goods and services as those of the pursuer. That is

sufficient to dispose of the pursuer's case and I turn to consider the defender's counterclaim.

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The defender's counterclaim: the challenge to the validity of the 2018 Marks

[341]

The defender challenged the validity of the pursuer's 2018 Marks on three discrete

grounds under section 47(1) of the Act. I did not understand its challenge to extend to the

registration of the 2018 Figurative Mark to class 33.

[342]

The defender advanced the same argument in support of its challenge based on

public policy (under section 3(3)(a)) and geographical origin (under section 3(1)(c)). Given

my findings on the issue of whether Tomatin is a place name, it is convenient to deal first

with the defender's challenge on these two grounds before considering the ground of bad

faith.

Section 3(1)(a): geographical origin

[343]

The starting point in considering the defender's challenge under section 3(1)(a) ("the

geographical origin ground"), is to note that a trade mark which consists "exclusively" of a

sign or indication which may serve, in trade, to designate the geographical origin of goods

or services shall not be registered, unless it has acquired a distinctive character as a result of

the use made of it. (I address the "exclusively" requirement below.) The prohibition also

applies to geographical names which are liable to be used in future by the undertakings

concerned as an indication of the geographical origin of that category of goods and/or

services. Section 3(1)(c) applies where at least one of the possible meanings of a mark

designates a characteristic of the goods or services (Furstlich Castell'sches Domanenamt

Albrecht Furst zu Castell-Castell v OHIM (T-320/10) [2014]). In this case, the characteristic

relied on is geographical origin or place of the goods and services where they will be

offered; it is not necessary for the goods to be manufactured in the geographical location in

order for them to be associated with it: Windsurfing Chiemsee at paragraph 37.

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[344]

The prohibition in section 3(1)(c) applies to the registration of geographical names as

trade marks where the names designate places which are in the mind of the relevant class of

persons and are currently associated with the category of goods and/or services in question.

However, section 3(1)(c) also applies to geographical names which are liable to be used in

future by the undertakings concerned as an indication of the geographical origin of that

category of goods or services (Windsurfing Chiemsee, at paragraph 37.) In other words, the

protection extends not just to existing operators, but also to any operator who might in

future offer goods or services which compete with those in respect of which registration is

sought (or, as here, in respect of a registered Mark which is challenged). Such an operator

must be able freely to use the signs or indications which may serve to describe

characteristics of its goods or services (in this case, their geographical origin): Koninklijke

KPN Nederland NV v Benelux-Merkenb urea u (C-363/99) [2004] ETMR 57 ("Koninklijke"),

at paragraph 58.

[345]

Where there is currently no association in the mind of the relevant class of persons

between the geographical name and the category of goods and/or services in question, the

court must assess whether it is reasonable to assume that such a name is, in the mind of the

relevant class of persons, capable of designating the geographical origin of that category of

goods and/or services in the future. See Windsurfing Chiemsee, at paragraph 37, and also

see the helpful discussion of the High Court in Canary Wharf Group plc v The Comptroller-

General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch) ("Canary Wharf") at

paragraphs 21 to 24.

[346]

The defender submits that underpinning ground 3(1)(c) is a principle of public

interest, and it relies on the affinity between this underlying principle and the public policy

ground. On the case law, the defender submitted that it was clear that the aim of the

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restriction on the use of signs or indications which may serve to designate goods (in this

case, it is the geographical origin or place of the goods or services) is the protection of the

public interest. It accepted as in the public interest that descriptive indicators, including

geographical ones, should be available for use by businesses in relation to the goods an d

services they provide. The effect of section 3(1)(c), therefore, is to prevent one undertaking

from monopolising these, even if they have been registered as trade marks (Windsurfing

Chiemsee, at paragraph 25). Mr Tariq referred to this as the "keep free" principle.

Section 3(3)(a): public policy

[347]

The second ground of invalidity, under section 3(3)(a) ("the public policy ground")

and the geographical origin ground effectively proceeded on the same basis, namely, that the

pursuer should not be permitted to monopolise a place name which is capable of serving as a

geographical indicator for those goods and/or services. The aim of the restriction on the use

of signs or indications of geographical origin of goods and/or services is the protection of the

public interest. That public interest requires that all signs or indications which may serve to

designate characteristics of the goods or services in respect of which registration is sought

remain freely available to all undertakings in order that they may use them when describing

the same characteristics of their own goods or services.

[348]

The defender referred to the case of Application by Chanel Limited, Case O-172-13

("Application by Chanel"), in which the Intellectual Property Office ("the IPO") refused

Chanel's application to register "Jersey" as a trade mark for certain goods (perfumery

and cosmetics) as contrary to the public interest of keeping the name available for use

by other undertakings to indicate the geographical origin of their products. The

defender submitted that the same considerations apply in this case. It was the

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defender's ambition, shared by local community and business groups, for Tomatin to

become a tourism destination in its own right.

[349]

The pursuer submits that the 2018 Figurative Mark is not exclusively a sign to

designate origin. It accepts that the 2018 Word Mark consists exclusively of a sign

which may designate a geographical origin, but, under reference to regulation 9 of and

schedule 1 to the the 2009 Regulations, it contends that in that mark its significance is as

the name of the pursuer's Distillery. It submits that other than in its use to describe the

Distillery, consumers would not be aware of "Tomatin" as a geographical location. In

any event, it submits that it has acquired distinctiveness in the Additional Classes and

for which account may be taken of post-registration use. The pursuer queries whether,

as a matter of construction of section 3(3)(a), geographical origin for which there is

separate provision should also fall within section 3(3)(a). It notes that if it did, an

anomaly would arise because the proviso present in section 3(1)(c) does not appear in

section 3(3)(a). It submitted that the public policy ground in section 3(3)(c) is directed to

prevent registration of marks that would give offence.

Consideration of the first ground of invalidity: the geographical origin ground in section 3(1)(c)

[350]

I start by considering the condition which must be met if section 3(1)(c) is to apply,

namely whether the mark under challenge consists "exclusively" of a sign. The defender's

challenge under section 3(1)(c) in respect of the 2018 Figurative Mark was predicated on

establishing the proposition that the figurative elements of that mark the rampant lions

and hogshead surmounted by a crest, and the words and figures "ESTd" and "1897" placed

on the sides of those pictorial elements were de minimis in the context of that mark as a

whole. If that submission is accepted, the Figurative Mark would essentially read as

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"Tomatin" and it would fall within section 3(1)(c). The defender's submission was that these

elements were wholly descriptive or non-distinctive and that the relevant public was

unlikely to view these additional elements as forming part of that Mark or having a trade

mark function. The pursuer submits that the Figurative Mark is not to be perceived or

treated as being comprised exclusively of the word "Tomatin".

[351]

I do not accept the defender's submission. The pictorial elements of the pursuer's

2018 Figurative Mark of the two facing rampant lions and the hogshead surmounted by a

crown are highly worked, intricate elements, and are of moderate size relative to the whole

Mark. These are significant elements of the Figurative Mark. In my view, the relevant

public would perceive these heraldic-style elements, particularly when coupled with the

other elements of "ESTd" and "1897", as seeking to convey qualities of prestige, heritage or

antiquity. These elements are conceptually distinct from Tomatin certainly of Tomatin as a

place name. In my view, the relevant public would not dismiss these as de minimis or as

having no trade mark function. On that analysis, the 2018 Figurative Mark does not satisfy

the statutory condition that it must consist "exclusively" of a sign. Accordingly, the

defender's challenge to the validity of the 2018 Figurative Mark based on section 3(1)(c) fails,

as does its challenge based on section 3(3)(a), given that the defender relied on the same

arguments and evidence for both.

[352]

What of the defender's challenge to the validity of the 2018 Word Mark on the

ground of geographical? I refer to my consideration of the evidence, particularly of the

parties' experts, on the issue of whether Tomatin was a geographical place name, and the

finding (at paras [93] to [96]) that historically Tomatin village was regarded as a village, with

its own post office and church, well before the founding of the Distillery; that its reputation

as a convenient stopping place continued in modern times for different types of travellers

205

(motorists and cyclists replacing drovers and rail passengers); and that Tomatin village,

including Tomatin junction, is known as a stopping place with facilities for travellers. There

was evidence about the use by a number of local businesses over the years of the description

"Tomatin" as part of their business names. There is no doubt that in those instances it is

being used as an indication of geographical origin to indicate wh ere those goods or services

were supplied. Prima facie therefore the 2018 Word Mark falls within the scope of

section 3(1)(c).

[353]

I understand that the defender accepts that the Original Word Mark has acquired the

requisite distinctiveness in respect of Scotch whisky (the class and specification for which it

is registered). However, the 2018 Word Mark is not registered in respect of class 33, but in

respect of the Additional Classes. Has the pursuer established that it has acquired

distinctiveness for "Tomatin" used in relation to the Additional Classes? The pursuer

submits that it has, as the pursuer is the only party to have used "Tomatin" in relation to any

specified class 41 use for which the 2018 Word Mark is registered; it is the only party to sell

retail items under the name "Tomatin" (class 35), and it is the only party to use Tomatin in

relation to on-site sales of alcoholic drinks (class 43) (which it has done at the Visitor Centre).

[354]

The defender contends that the goods or services for which the 2018 Marks are

registered are all the types of goods or services found in most places in the United Kingdom,

including small villages such as Tomatin. Retail services connected with the sale of food and

beverages (class 35); educational services relating to the production, sale, history and

consumption of whisky and other distilled spirits (in class 41); and bars, cafés, restaurants,

pubs and catering (food and drink) (class 43) were types of services in many places,

including small villages, in the United Kingdom. It also submits that the relevant class of

person for the goods or services in classes 33 (with the exception of Scotch Whisky for which

206

the Pursuer has acquired distinctiveness), 35, 41 and 43 might associate the "Tomatin" name

with the name of the village in which those goods and/or services are provided; and that

there is a particular likelihood of this association in relation to the services in classes 35, 41

and 43 where the average consumer is likely to have a connection with the village of

Tomatin either as a local resident or someone who intends to pass through or near Tomatin.

As noted above, there are a number of businesses and amenities within the area of Tomatin

that use (or have used) the "Tomatin" name in the course of a business.

[355]

In my view, the pursuer has not established that "Tomatin" has acquired any

distinctiveness in the Additional Classes for which the 2018 Word Mark was registered.

Given the relatively short period of time during which the pursuer has offered goods and

services under the Additional Classes protected by the 2018 Marks and the limited offer of

those goods and services (which I discuss in more detail below, in my consideration of the

bad faith ground), and given my finding of the absence of the requisite reputation, I find

that the pursuer has not established distinctiveness. It has not brought itself within the

proviso. The 2018 Word Mark therefore falls to be invalidated under section 3(1)(c).

Consideration of the second grounds of invalidity: the public policy ground in section 3(3)(a)

[356]

In relation to section 3(3)(a), in the absence of full argument on what may be an

important point on the construction of this subsection, I express only a provisional view.

While the defender has persuasively argued that the pursuer should not be able to

monopolise a place name which is capable of serving as a geographical indicator for goods

and services (on the hypothesis "Tomatin" is a place name), and which was presented as

also invoking the "keep free" principle, there is force in the pursuer's submission that it was

not intended that the public policy ground in section 3(3)(a) should subsume other available

207

grounds, and that doing so in this case creates an anomaly. The fact that the proviso in

section 3(1)(c) could be elided by resort to section 3(3)(a), if the latter provision were

construed to encompass a matter that might also fall within section 3(1)(c), militates against

this construction.

[357]

I therefore uphold the defender's challenge to the invalidity of the 2018 Word Mark

on the first ground under section 3(1)(c), but not in respect of the 2018 Figurative Mark. I

reject the defender's challenge to both of the 2018 Marks under section 3(3)(a). I therefore

turn to the defender's challenge on the third ground of invalidity, of bad faith.

The defender's third ground of invalidity: bad faith

[358]

In terms of section 3(6) of the 1994 Act, a trade mark shall not be registered if or to

the extent that the application is made in bad faith. A trade mark application made without

any intention to use the mark in relation to the goods and services covered by the

registration constitutes bad faith, if the applicant for registration of that mark had the

intention either of undermining, in a manner inconsistent with honest practices, the interests

of third parties, or of obtaining, without even targeting a specific third party, an exclusive

right for purposes other than those falling within the functions of a trade mark. The relevant

principles applicable to bad faith registrations are set out in the cases of Red Bull GMBH v

Sun Mark Ltd, Sea Air & Land Forwarding Ltd [2013] ETMR 53 ("Red Bull") at paragraphs 130

to 138 and Sky v SkyKick [2020] EUCJU C-371/18, [2020] ETMR 24 ("Skykick (CJEU)") at

paragraphs 74-80, as follows:

The relevant time for determining whether there was bad faith on the part of

the applicant is the time of filing the application for registration. However, later

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evidence is relevant if it casts light backwards on the position as at the application

date (Red Bull at paragraphs 131 to 132);

A person is presumed to have acted in good faith unless the contrary is

proved. An allegation of bad faith is a serious allegation which must be distinctly

proved. The standard of proof is on the balance of probabilities but cogent evidence

is required due to the seriousness of the allegation. It is not enough to prove facts

which are also consistent with good faith (ibid at paragraph 133);

Bad faith includes not only dishonesty, but also some dealings wh ich fall

short of the standards of acceptable commercial behaviour observed by reasonable

and experienced men in the particular area being examined (ibid at paragraph 135);

In order to determine whether the applicant acted in bad faith, the court must

make an overall assessment, taking into account all the factors relevant to the

particular case (ibid at paragraph 136);

The court must first ascertain what the applicant knew about the matters in

question and then decide whether, in the light of that knowledge, the applicant's

conduct is dishonest (or otherwise falls short of the standards of acceptable

commercial behaviour) judged by ordinary standards of honest people. The

applicant's own standards of honesty (or acceptable commercial behaviour) are

irrelevant to the enquiry (ibid at paragraph 13);

A trade mark application made without any intention to use the mark in

relation to the goods and services covered by the registration constitutes bad faith, if

the applicant for registration of that mark had the intention either of undermining, in

a manner inconsistent with honest practices, the interests of third parties, or of

obtaining, without even targeting a specific third party, an exclusive right for

209

purposes other than those falling within the functions of a trade mark (Skykick at

paragraphs 74 to 78); and

Account may also be taken of the commercial logic underlying the filing of

the application for registration of the sign and the chronology of events relating to

the filing (SA.PAR v OHIM (GRUPPO SALINI) Case T-321/10, at paragraph 23).

Furthermore, as bad faith is rarely admitted, it may be established by the court drawing the

necessary inference from the objective facts before it. Similarly, the registered proprietor's

subjective belief that its' conduct constituted acceptable behaviour does not preclude a

finding of bad faith, if there is an objective basis to support that inference.

[359]

Cases in which bad faith is established are relatively rare. Some examples of bad

faith were drawn from one of the leading textbooks, Kerly's (at paragraphs 10-334 to 10-335),

including:

An attempt to hijack a mark or spoil a competitor's plans i.e. the applicant

has no bona fide intention to use the trade mark at all, but wishes to prevent a

competitor from using the, or a similar, mark;

The specifications of the goods or services is too broad i.e. the applicant has

used the mark on a limited range of goods for some years. They have no current

plans to expand their use beyond the existing range of goods but the specification of

goods for which they are applying includes goods which are unrelated to the goods

in relation to which they currently use the mark;

The specifications of the goods or services is too broad i.e. the applicant has

used the mark on a limited range of goods for some years. They have no current

plans to expand their use beyond the existing range of goods but are advised to

apply for a specification of goods including goods which are unrelated to the goods

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in relation to which they currently use the mark, in order to secure the widest

infringement rights. The applicant follows the advice.

[360]

The recent Skykick cases provide invaluable assistance on bad faith in this context. It

confirmed that a trade mark application made without any intention to use the mark in

relation to the goods and services covered by the registration constitutes bad faith, if the

applicant for registration of that mark had the intention either of undermining, in a manner

inconsistent with honest practices, the interests of third parties, or of obtaining, without

even targeting a specific third party, an exclusive right for purposes other than those falling

within the functions of a trade mark (Skykick at paragraphs 74 to 78).

[361]

The defender founded strongly on another of the Sky v SkyKick cases ( [2020] EWHC

990 (Ch) ("SkyKick (2020 Ch)"), at paragraphs 21 to 22) and SkyKick (2018 Ch ) , at

paragraph 250) and on the findings of Arnold LJ in the former case), that the trade mark

applications in that case had in part been made in (bad faith for four separate reasons, as

follows:

Not merely did the applicant in SkyKick not intend to use the trade marks in

relation to some goods and services covered by the specifications at the application

dates, but there was no foreseeable prospect that they would ever intend to use the

trade marks in relation to such goods and services;

The applicant made the applications pursuant to a deliberate strategy of

seeking very broad protection of the trademarks regardless of whether it was

commercially justified;

The applicant applied for the trade marks with the intention of obtaining an

exclusive right for purposes other than those falling within the functions of a trade

mark namely, purely as a legal weapon against third parties, whether in threats of

211

infringement claims or actual infringement claims or oppositions to third party

applications for registration; and

The applicant made a partly false section 32(3) declaration in order to obtain

such protection. This was plainly inconsistent with honest practices in industrial and

commercial matters and strengthened the conclusion that the applications were

made in bad faith.

[362]

The defender submits that the pursuer filed the 2018 Marks in bad faith for the same

reasons. The evidence it founds on is as follows:

That the pursuer was aware of the defender's intended use of the name

"Tomatin Trading Company" for the Development by the time it filed the

registration for the 2018 Marks. It founds on the February 2018 meeting and on the

media publicity in the following month in which most of those mentioned the

defender's plans for a "hotel, restaurant and retail development". The applications

for the 2018 Marks covered the very services that had been announced in the press as

forming part of the proposed Development. The timing of the pursuer's applications

to register the 2018 Marks, coming within days of that media coverage, was not

coincidental;

The pursuer produces single malt whisky under the "Tomatin" brand. It

filed the applications for the 2018 Marks in bad faith and with the intention of

obstructing the defender's use of its name in relation to the Development. There was

no reasonable explanation proffered at the proof, notwithstanding the defender's

challenge on this issue. Mr Bremner's evidence as to the timing was unconvincing.

The pursuer failed to produce any documentary evidence of its discussions with its

trade mark agents about the registration of trade marks beyond class 33 despite

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having discussions "for quite a few years". The sole evidence was the single

assertion by Mr Bremner (see para [152], above). The pursuer anticipated that the

defender wanted to use "Tomatin" for the type of goods and services the 2018 Marks

were registered; and its knee-jerk reaction was to file applications for the 2018 Marks

as soon as possible. The pursuer was in effect seeking to lay its hands on registered

trade marks which could prevent the defender's intended use of "Tomatin" within

the name of the Development;

Separately, the pursuer filed the applications for the 2018 Marks without the

intention at the application dates of using the marks in relation to the goods and

services covered by the registrations. The pursuer filed the applications as part of a

deliberate strategy of seeking very broad protection for the "Tomatin" mark

regardless of whether it was commercially justified. Mr Tariq noted that

section 32(3) of the Act requires that when making an application to register a trade

mark, an applicant must state that the trade mark is being used or that there is a bona

fide intention that it should be so used. The pursuer has failed to show a bona fide

intention to use the 2018 Marks in relation to the goods and services for which they

were already not being used. Mr Bremner's evidence about the potential expansion

of the Distillery's Visitor Centre was unconvincing and should not be accepted. It

follows that the pursuer has made a false, or partially false, declaration to obtain

the protection of the 2018 Marks in respect of the goods and/or services for which

they are registered.

In these circumstances, the 2018 Marks should be invalidated in terms of section 3(6) as the

applications were made in bad faith.

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[363]

In reply, the pursuer relies on the following principles, derived from Red Bull v Sun

Mark [2013] ETMR 53, at paragraph 133, namely: that it is presumed that the applicant acted

in good faith and the onus is therefore on the party making the challenge to prove bad faith;

that an allegation of bad faith is a serious allegation which must be distinctly proved; that

the standard of proof is on the balance of probabilities but cogent evidence is required due

to the seriousness of the allegation; that it is not enough to prove facts which are also

consistent with good faith (paragraph 133); and that section 3(6) is intended to prevent

abuses of the trade mark system either vis a vis the trade mark office or vis a vis third

parties (at paragraph 135).

[364]

It submits that there is no evidence that is capable of supporting the allegation of bad

faith. In making that submission, the pursuer referred to Mr Bremner's explanation that the

2018 Marks were intended to broaden out the Original Word Mark, and it stated that

Mr Bremner's evidence was that the pursuer did so "on the advice of trade mark attorneys".

The registration of the 2018 Marks was also said to tie in with the 2016 brand refresh and

driven by the fact that the revenue from the Visitor Centre had become "a significant part"

of the pursuer's business. The pursuer's submission was that

"Although expansion of the visitor's centre was paused and there were no concrete

plans, it has actively been investigated and it was then and remains a real

possibility. It is not bad faith for a party to seek trade mark protection with a view

to developing their business in future." (Emphasis added.)

This was developed in the pursuer's supplementary submission:

"Although the works were not carried out immediately, the position was similar to

that described by Arnold J in Red Bull in that there was no `concrete intention'

([2013] ETMR 53, paragraphs 191 and 192). That was found not to lead to an

inference of bad faith there and it should not do so here. A similar decision was

reached in Total v You View ([2015] FSR 7) where it was held that there was no

requirement for a positive intention at the time of application to use that mark

across the whole range of activities covered by the specification. This is consistent

214

with the decision of Arnold LJ in Sky when he said at paragraph 21,

`In my judgment Sky applied for the Trade Marks partly in bad faith in each

of the three ways referred to in the Main Judgment at [251]. Not merely did

they not intend to use the Trade Marks in relation to some goods and

services covered by the specifications at the application dates, but there was

no foreseeable prospect that they would ever intend to use the Trade

Marks in relation to such goods and services. Moreover, Sky made the

applications pursuant to a deliberate strategy of seeking very broad

protection of the Trade Marks regardless of whether it was commercially

justified. Sky thus applied for the Trade Marks with the intention of

obtaining an exclusive right for purposes other than those falling within the

functions of a trade mark, namely purely as a legal weapon against third

parties, whether in threats of infringement claims or actual infringement

claims or oppositions to third party applications for registration (as to which,

see also the Main Judgment at [69]-[72]).'" (Emphases added in the

submission)

The pursuer founded on those observations and submitted that there was no evidence of the

three factors identified in that case: Mr Bremner had not become aware at the February 2018

meeting of the defender's intention to use its name for the Development; the broader

protection had followed "advice that [the pursuer] should do this" and this was commonly

done by other distilleries (emphasis added). In any event, it complained that there was no

fair notice by the defender of what limitation should have been made to the scope of the

registration.

Consideration of the bad faith challenge: What was the pursuer's state of knowledge at the relevant

time?

[365]

It is in this context that the evidence of the February 2018 meeting is relevant. The

defender relied on the email sent just before it, and (on its version of events) Mr Frame's

mention at that meeting of the Tomatin Trading Company name in association with it as

well as the business card it said was handed over. The pursuer's witnesses were adamant

that Mr Frame did not mention the use of the defender's name on that occasion as the

215

trading name of the Development going forward, and that no business card containing that

name was produced. I am not persuaded that this chapter of evidence is particularly

significant or that any safe conclusion can be made as to whether Mr Frame mentioned the

defender's intention to use its name.

[366]

The acknowledgement of the pursuer's witnesses questioned about this of their

awareness of the media coverage of the Development (in which there was mention of the

defender's name and the proposed retail, restaurant and hotel facilities) a few weeks later

supersedes, in practical terms, the evidence of what was or was not said at the February 2018

meeting. The pursuer's witnesses who were questioned accepted that as a consequence of

the media coverage on 21 or 22 March 2018 they were aware of the key elements of the

defender's Development and that it was being described as the "Tomatin Trading

Company". (The assertion to the contrary in the pursuer's written submission is

inconsistent with this evidence.) Both Mr Bremner and Mr Anderson were visceral in their

reaction to the prospect of the defender's use of "Tomatin" as part of its trading name and

they were both adamant that the pursuer was entitled to exclusive use of "Tomatin". (And

of course that stance informs the grounds maintained in the principal action.) This evidence

lends some limited support to the pursuer's position that this aspect of the defender's plans

was not discussed at the February 2018 meeting. (If that is the case, the pursuer's omission

to mention its own pending or intended applications at the meeting of February 2018, a

matter founded on by the defender as indicative of bad faith, becomes a neutral factor.)

[367]

I also accept their evidence that they did not read or really focus on the subject -line

of the email the defender sent to them just before that meeting. The evidence about

Mr Frame's presentation of the business card was equivocal: Mr Anderson could not state

positively that he had received one; Mr Frame could not positively state that he had handed

216

one over it was only his "habit" to do so. That evidence, together with the evidence

elicited in cross-examination of Mr Frame that the version of the business card produced

post-dated the date of the February 2018 meeting (because the 3D plan of the Development

it depicted was a later iteration of the proposed design of the Development), and

Mr Bremner's evident surprise in the witness box when the obverse side of the business card

produced was put to him, all lead to the conclusion that the business card produced was not

the one presented at the February 2018 meeting. However, as noted above, this matters

little, given the clear evidence that the pursuer was aware of the defender's proposal to use

its name at the Development from the media coverage in mid-March, a few weeks after the

February 2018 meeting. Mr Bremner retracted the assertion, made in his initial witness

statement, that he was not aware of the defender's intention to use its name until

January 2019. In evidence he accepted that he was aware of the media coverage in mid-

March 2018. That coverage included the defender's proposed use of the name "Th e Tomatin

Trading Company" and the key facilities of a hotel, restaurant and retail it proposed to offer.

Consideration of the bad faith challenge: Is there any credible evidence that the pursuer acted on

advice?

[368]

It is accepted that where a party acts on the advice of a professional, such as a trade

mark agent, this can be highly relevant to an issue such as bad faith. Equally, on the

authorities, a party's failure to vouch that it has had, and acted on, such advice can be

weighed in the balance. The pursuer's evidence about the involvement of its trade mark

agents was wholly unsatisfactory. Mr Bremner endeavoured to suggest that the pursuer

was "proactive" in such matters (referring to the number of its global marks), but at the

same time he suggested that the pursuer had been "discussing with [the pursuer's] trade

217

mark agents for quite a few years" extending its protection to the classes covered by the

2018 Marks. At its highest, his evidence amounted to no more than that, at some point in the

past, there had been essentially generic advice about possibly obtaining broader trade mark

protection. There was only the most limited evidence of what prompted the pursuer to file

the applications for the 2018 Marks at all, or at the time it did, or of the scope of the

protection sought. Again, only Mr Bremner spoke to this matter. The wording of

Mr Bremner's statement was careful: at no point was it asserted that the pursuer's trade

mark attorneys "advised" the pursuer to register the Marks. (The pursuer's assertion in its

written submissions to the contrary, quoted above at the end of para [364], overstates the

evidence.) Mr Bremner's choice of words, that the trade mark agents had seen some

coverage and "encouraged into signing", is problematic. This falls far short of those agents

giving advice to the pursuer to do so. Given the obvious importance of this issue, I infer that

it could not be positively stated that the pursuer's trade mark agents had given the pursu er

advice and that a positive-sounding word such as "encourage" was selected to mask that

omission. Further support for this is found in the only other passage of Mr Bremner's

evidence on this point: "This coverage [ie the media coverage in March 2018] acted as a

prompt for us to act on the expansion of our trade marks" (emphasis added). This points

away from advice from its trade mark agents as the motivating factor for, or explaining the

timing of, the pursuer's applications for the 2018 Marks. In his evidence on this matter,

Mr Bremner appeared to be both uncomfortable and aggressive. I did not find his evidence

on this chapter to be credible. The absence of any documentary evidence, or even a witness

from its agents (who appear to be Edinburgh-based), was a critical omission. Mr Bremner

did not suggest that there were documentary materials; he simply confirmed that nothing

had been produced.

218

[369]

I have already noted Mr Bremner's visceral reaction to any proposed use of the

defender's name in relation to the Development. Mr Anderson had a similar reaction. It

was clear that both of these witnesses had strong views that the pursuer had exclusive r ights

to the Tomatin name and that it was to be protected, which mititates against any inference

that they were acting on advice. Their strong views on the pursuer's entitlement to the

exclusive use of "Tomatin" may have led them to believe that advice was not needed, and

which may explain the absence of written or credible evidence of any advice from the

pursuer's trade mark agents.

Consideration of the bad faith challenge: The chronology or timing of the pursuer's registration of the

2018 Marks

[370]

The defender founds on the timing of the pursuer's application for the 2018 Marks,

particularly for the 2018 Word Mark, which was only 4 or 5 days after the media coverage of

the Development. I find the exceptionally short space of time between the media coverage

and the pursuer's application for the Word Mark to be significant, if unexplained. None of

the pursuer's witnesses suggested that the timing was coincidental. There was, for example,

no evidence that the application for the 2018 Word Mark was already in the course of

preparation. Further, this body of evidence is consistent with the evidence I have noted, of

the senior executives' protective instincts in respect of the "Tomatin" name and of their

views that the pursuer had exclusive rights to this. Collectively, I find these circumstances to

be compelling. On the authorities, the absence of a credible explanation for the timing of an

application may be a relevant factor as part of the overall assessment of whether there has

been bad faith. I give some weight to the absence of a credible explanation from any of the

pursuer's witnesses for the timing of the applications for the 2018 Marks.

219

Consideration of the bad faith challenge: The pursuer's current and proposed offering under the

Additional Classes

[371]

I next consider the nature of the pursuer's current and proposed offering under the

Additional Classes, as this may inform the issue of its intention, as well as whether the scope

of the specifications secured under the Additional Classes were too broad. It is relevant to

consider not just the pursuer's present offering, but what it may offer in the future. These

matters are to be judged objectively: it is not enough for a party blandly to assert that it has

an intention to supply the goods or services in the future. The defender cited the case of Re

Ducker's Trade Mark [1929] 1 Ch. 113. In that case, the Court of Appeal held that the bona fide

intention to use a trade mark, as required by section 37 of the Trade Marks Act 1905 (and

now required by section 32(3) of the Act), means a definite and present intention on the

part of the proprietor to use it; and that this section is not satisfied by a precautionary

registration with a contingent intention of using the mark if the occasion required.

Lord Hanworth M.R. 7 stated:

"... a man must have an intention to deal, and meaning by the intention to deal some

definite and present intention to deal, in certain goods or descriptions of goods. I

agree that the goods need not be in being at the moment, and that there is futurity

indicated in the definition; but the mark is to be a mark which is to be definitely

used or in respect of which there is a resolve to use it in the immediate future upon

or in connexion with goods. I think that the words "proposed to be used" mean a

real intention to use, not a mere problematical intention, not an uncertain or in

determinate possibility, but a resolve or settled purpose which has been reached at

the time when the mark is to be registered." (Emphasis added.)

In that same case, he considered the meaning of bona fide:

"What is the meaning of "bona fide"? I think that must mean a real intention in the

sense which I have already explained, and if it is not found that there was that real

resolve, intention and purpose, then it is established that originally the mark was

put upon the register when it ought not to have been put on, because there was not a

sincere purpose to make use of the mark in connexion with goods. If that is the right

220

view it accords precisely with what Tomlin J. has determined. He says (1): `I do not

think that there was, at the time of registration, any definite and present intention to

use it within In re Batt's Trade Marks (2), the language in which is as appropriate to-

day as when that case was decided.' It appears to me, therefore, that Tomlin J. has

reached what, to my mind, is the right construction of both the sections in the Act

of 1905, with the consequence that, accepting the facts as found by him, it has been

proved to him that there was not, within the meaning of the Act, a bona fide

intention to use; and on the second part it is admitted there was non-user up to the

date of the application." (Emphasis added.)

I bear these observations in mind when considering the evidence relevant to this ground of

challenge. Before doing so, I should address the pursuer's reliance on what some other

distilleries may have done in terms of seeking protection for classes beyond class 33. In my

view, this evidence is unpersuasive. There was no evidence that this had motivated the

pursuer at the time (as opposed to being invoked as an ex post facto justification). More

fundamentally, whether other distilleries do seek to extend their trade mark protection does

not lend support any finding that the pursuer has done so. It is entirely neutral evidence on

the issue which the defender must distinctly prove, which was whethr the pursuer's

registration f the 2018 Marks was in bad faith.

[372]

In this case, the question of whether the pursuer has the requisite intention or resolve

to offer goods or services falling within the Additional Classes is inextricably bound up with

the question of timing, that is, the future time-frame within which any asserted intention

might be brought to fruition. I propose to address this by considering the evidence about

the current and proposed offerings under the Additional Classes.

[373]

Starting with Class 35 (retail), whether considered as part of the pursuer's overall

turnover, its activities within the United Kingdom or in qualitative terms, the pursuer's

retail offer covered by the 2018 Marks, can only be described as very limited. While the

Visitor Centre's contribution to the pursuer's turnover was a little over £1 million in 2019,

221

the amount contributed by its retail offering (ie excluding whisky sales and distillery to urs)

was exceptionally modest, at £50,000 (or only 5% of the Visitor Centre's turnover, the figures

are provided at para [74], above). The scant evidence about the offering of such items at

occasional external events (eg at festivals or food fairs) would suggest any sales outwith the

Visitor Centre were minimal. There was no evidence to suggest that the pursuer proposed

to extend its range of retail offering or its reach, such as selling its goods on a regular or

permanent basis at other outlets. Indeed, on Mr Bremner's evidence, the pursuer had closed

a shop in 2016. Nor was there any evidence that the space at the Visitor Centre would be

expanded or reconfigured to accommodate an increased retail offering. Rather, on the

pursuer's evidence it wished to reduce or "stabilise" numbers at the Visitor Cen tre.

[374]

Turning to class 43, bar and leisure, the pursuer's current offering is even more

limited than its retail offering. There is at present no restaurant, café or meal provision. The

pursuer did not lead evidence as to the capacity of the Visitor Centre, which therefore had to

be gleaned from photographs of the Centre's interior. The Visitor Centre's bar area (as

depicted in the photographs) appeared able to accommodate up to four or (possibly) five

adults and perhaps another one or two adults seated around the one or two up-turned

barrels. That is the context in which to assess Mr Bremner's assertion that the pursuer

hosted "entertainment, conferences and educational events" at the Distillery. At best, that

statement is a gross exaggeration of the pursuer's ability to host such events; at worst, it is

misleading and it does not reflect the very limited capacity of the Visitor Centre. There was

no evidence of anything characterised as "entertainment" of the kind to which the general

public might have access, or of any educational activity other than the tour of the Distillery

(coupled with any pre-tour video or post-tour question-and-answer tasting session). There

222

is no kitchen at all at the Distillery and no space in the Visitor Centre is dedicated to eating

or drinking at a table.

[375]

The only foodstuffs offered for eating on the premises (as opposed to a packaged

fruit cake or a packet of fudge sold as gifts) were the individually-wrapped biscuits placed

next to the coffee machine. Coffee and tea was self-serve and available from a small

machine with a capacity to produce two cups at a time. (While Mr McGowan did not note

these during his visit, these items may have been removed as a consequence of the

pandemic to reduce hand-to-hand transmission.) In terms of cold drinks, I have noted the

evidence of this: the 2019 spreadsheet of soft drinks sold in 2019 disclosed a total of less

than 70 purchases in a year and the vast majority of those were under a pound. In respect of

the consumption of whisky, the layout and very modest size of the bar area was geared

towards whisky being offered for tasting a dram (rather than for purchase for consumption

on the premises, as a discrete activity). The evidence of the sale or consumption of any other

alcoholic drinks was non-existent. Again, and not surprisingly, given the pursuer's evidence

that tastings were to facilitate the purchase of bottles of whisky, this is a very specific kind of

experience for the purposes of class 45. Indeed, on the pursuer's evidence, such consumers

were being converted into brand ambassadors. There was no suggestion that consumers

would travel to the Visitor Centre for the primary purpose of obtaining a meal out or a drink

to be savoured over a period of time at a table or in company.

[376]

Several of the pursuer's witnesses spoke to the ambitions for the Visitor Centre as

including a restaurant. However, it was accepted that in none of various concepts produced

in late 2017 or early 2018 was there any provision made for a restaurant or even a kitchen to

service it. Apart from a small room intended for whisky-tasting purposes, with a single

table for a notional eight or ten persons, there was no provision for any space dedicated to

223

any activity falling within class 43. By March 2018, the pursuer had shelved all of these

proposals in favour of providing more office space. None of the pursuer's witnesses offered

any kind of time-frame within which realistic provision by way of a kitchen, or a restaurant,

or dedicated dining and drinking spaces might come to fruition. At best, Mr Bremner put it

negatively, that the pursuer had up to 5 years before it had to offer goods or services within

the Additional Classes. Beyond the three proposals considered in late 2017 (none of which

provided for these kinds of spaces), there was no other evidence of even any basic

preparatory steps taken by the pursuer to bring its plans for offering goods or services

within this class to fruition - whether in the form of market research or projections to test the

viability of this level of expenditure, or of architects' detailed drawings, or the results of any

soundings from, or applications to, the local authority from whom a variety of consents

would in due course be required. The pursuer's witnesses were pressed on the firmness of

the pursuer's plans for this kind of provision. Each accepted that there were "no concrete

proposals" to build a kitchen or restaurant or other provision enabling the expansion of the

pursuer's activities falling within class 43 beyond its existing and very limited provision.

The language that was used, to describe the pursuer's plans as "fluid" or "being discussed",

could not mask the absence of any real intention in any credible time-frame on the part of

the pursuer to provide any goods or services (beyond the very limited offering in place)

under this class. On this chapter of their evidence, the pursuer's witnesses were wholly

unconvincing.

[377]

The pursuer's educational offering comprised the distillery tours and the video

shown in the Visitor Centre in the summer months. There was no evidence to suggest that

this provision was to be augmented in any way, or that the Visitor Centre or any other part

224

of the Distillery covered by the tour had the capacity for increased numbers. There is no

evidence of the form that any other activity at the Development within this class would take.

[378]

In light of this evidence, Mr Bremner's assertion that the 2018 Marks were applied

for to protect the pursuer's "core business" is simply not credible in relation to any of the

Additional Classes. Nor is it consistent with commercial logic, given the very modest

contribution these activities at present make to the pursuer's turnover.

[379]

On the question of the time-frame within which a trade mark holder must provide

the goods or services in order to deflect a bad faith challenge, the parties produced cases

supporting different formulations of the permissible degree of futurity: the case of IRC,

cited by defender, suggested a shorter time-frame ("a resolve to use in the immediate

future") than the phrase in one of the Skykick cases (that bad faith may be inferred if there

were "no foreseeable prospect that [the holder of the mark] would ever intend to use" the

classes covered). In their evidence, the witnesses assented to the proposition that there

"were no concrete proposals", although Mr Lake takes the point that that formulation is not

the test and, in any event, this evidence is not determinative. Even assuming the more

generous formulation and bearing in mind that the onus rests on the defender, on the whole

evidence I find that it has been ample and compelling evidence that there is no foreseeable

or realistic prospect that the pursuer will offer the goods and services falling within the

Additional Classes to the extent that they do not already do so in the limited way disclosed

in the evidence. Testing this another way: on the evidence, there is no prospect the pursuer

will do so within the remaining two years of the 5-year period from when each of the

2018 Marks was registered.

[380]

In light of this evidence, I accept the defender's submission as well-founded that the

pursuer has failed to show a bona fide intention to use the 2018 Marks in relation to the goods

225

and services for which they were already not being used, and that, accordingly, the pursuer

has to that extent made a false, or partially false, declaration to obtain the protection of the

2018 Marks for the Additional Classes.

[381]

Moreover, the evidence I have just noted (including that of the pursuer's senior

executives, particularly Mr Bremner, of the pursuer's protectiveness of Tomatin; its belief

that it has exclusive use of it; the patent lack of commercial justification for the Additional

Classes, having regard to the minimal contribution these activities make to the pursuer's

turnover), amply supports the inferences that in registering the 2018 Marks for the

Additional Classes the pursuer was pursuing a deliberate strategy of seeking very broad

protection of the trademarks regardless of whether it was commercially justified; and that

its motive in doing so was to use the 2018 Marks as a weapon to thwart the defender's

engaging in these activities under its name at the Development. In doing so, the pursuer's

conduct fell short of the standards of acceptable commercial behaviour observed by

reasonable and experienced persons in this industry. A small but telling adminicle of

evidence is the contrast between the pursuer's tolerance of the use of Tomatin by other

businesses as part of their trading names and its determination to preclude the defender's

use of it for the Development.

[382]

In coming to these conclusions I have borne in mind the guidance provided in the

cases of Red Bull and Skykick, in particular that the pursuer is presumed to act in good faith,

that the defender bears the onus, that the assessment is an overall one having regard to the

whole evidence, and that bad faith must be distinctly proved upon a cogent body of

evidence. I have also addressed the discrete factors the parties identified from the case law

or textbooks (eg the pursuer's state of knowledge, the timing and commercial logic of the

registrations etc) and provided my findings on these matter above. I find that the evidence I

226

have accepted is not consistent with good faith on the part of the pursuer. Having regard to

the totality of the evidence and making an overall assessment of it, as informed by the

guidance from these cases, I find that the defender has distinctly proved on the basis of

cogent and compelling evidence that the pursuer was in bad faith at the time it registered

the 2018 Marks. That finding is subject to whether, or to what extent, any of the specified

activities under the Additional Classes had acquired distinctiveness by the time of the

application for these marks, and would fall to be excluded from the bad faith challenge. If

that is the case, this would give rise to a partial invalidity. I return to this, below.

Discussion of the remedies

The defender's prejudice point and the pursuer's remedies

[383]

Three final matters require to be dealt with, concerning the remedies sought in the

principal action and in the counterclaim.

The defender's prejudice point

[384]

As noted above, in addition to the prematurity point the defender contends that it is

prejudiced by these proceedings. That submission arises from the interaction of the

principal action, the defender's Application and the pursuer's Opposition Proceedings.

Only the UKIPO has the competence to determine the defender's Application. If it grants

the Application, section 11 of the Act is brought into play. That section provides that

"A registered trade mark is not infringed by the use of a later registered trade mark

where that later registered trade mark would not be declared invalid pursuant to

section 47(2A) or (2G) or section 48(1).

The defender notes that if the UKIPO granted the Application, this would be a complete

defence to the pursuer's claims, as the defender's use of its own (now registered) trade mark

227

would not constitute an infringement of any of the pursuer's Marks. However, on the

application of the pursuer, the UKIPO has sisted its consideration of the Application,

pending the Court's determination of the principal action and the counterclaim. The

defender submits that the pursuer has effectively blocked the defender from advancing its

Application before the UKIPO. In those circumstances, it would be highly prejudicial to the

defender if the court were to assess the likelihood (or, on the pursuer's approach, the

pursuer's reasonable apprehension) of trade mark infringement at some point in the

future, because this approach would ignore the defender's pending application to the

UKIPO. The UKIPO's determination could fundamentally alter the parties' rights. In these

circumstances, it submits that the court should only view the pursuer's claims of trade

mark infringement on the basis of how matters stand at this time. Its submission was, in

effect, that evidence of potential future use should be disregarded. As the defender is

currently not using the "Tomatin Trading Company" Sign "in relation to goods or services",

its claims of trade mark infringement cannot succeed.

[385]

The defender makes the same point in relation to the pursuer's claim of passing off:

in the absence of any supply by the defender of any goods or services and, accordingly, in

the absence of any operative (and assumed) misrepresentation at this time, the court is being

compelled to speculate as to what goods or services will be provided by the defender in

future and the relevant conditions in the market at that time to assess whether consumers

might be deceived. In these circumstances, the claim for passing off cannot succeed.

[386]

The defender contrasts this with the position if the pursuer had not proceeded so

quickly with the principal action. In those circumstances, the respective rights of the parties

would have been certain (and, if the defender's Application had succeeded, it would have

had a complete defence to the pursuer's claim of trade mark infringement), as would the

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factual matrix against which trade mark infringement and passing off are to be assessed.

The defender refers to the test it identified from the English quia timet cases and maintains

that the pursuer is bound to fail. In doing "justice between the parties, having regard to all

the relevant circumstances" (per Russell L.J. said in Hooper), the court should dismiss the

action at this time.

[387]

The pursuer's response on the timing of its action was to refer Mr Frame's evidence

and the representations in the marketing materials and on the website that the defender's

name will be used in association with the Development as being sufficient to justify its

reasonable apprehension of infringement. In this context, it relies on the following passage

from Celine ([2007] ETMR 80, at paragraph 23) in which the CJEU observed:

"...even where the sign is not affixed, there is use "in relation to goods or services"

within the meaning of that provision where the third party uses that sign in such a

way that a link is established between the sign which constitutes the company,

trade or shop name of the third party and the goods marketed or the services

provided by the third party." (Emphasis added.)

This reflects the passage of the Opinion of the Advocate General (at paragraph 61) in the

same case:

"Subsequent use of such a name in the course of trade must be assessed by the

competent court in order to determine whether it constitutes use in relation to goods

or services for the purposes of that provision, that is to say, whether it is such as to

distinguish the goods or services concerned and to affect the trade mark

proprietor's interests by encroaching upon the ability of his trade mark to fulfil its

essential function of guaranteeing to customers the origin of his own goods or

services. That will be true in particular if the use in question creates the

impression that there is a material link in trade between the trade mark proprietor

and goods or services of another origin. In that regard, it must be established

whether the consumers targeted are likely to interpret the use of the sign as

designating or tending to designate the origin of the goods or services." (Emphasis

added.)

It notes that this approach has been followed in cases such as UDV North American Inc. v

Brandtraders NV [2010] ETMR 25 (paragraph 47), and that in RXworks Limited v Hunter (t/a

Connect Computers) [2008] ECC 15 (paragraph 22) it was held that the sign need not have

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motivated sale and need not even be visible at sale. The pursuer's position is that it has

demonstrated a link and that the defender's intention in relation to the Development,

spoken to by Mr Frame, brings this case within the scope of Celine and justifies the

pursuer's reasonable apprehension. The pursuer submits that the fact that the defender

made an application for a trade mark makes these proceedings more appropriate, rather

than less.

Consideration of the prejudice point

[388]

One of the unusual features of the principal action is that it has been brought before

the Development has been built and therefore before (and perhaps several years before) the

defender would be in a position to supply any goods and/or services. In considering the

pursuer's statutory claims, I have already noted the difficulties this poses for the pursuer, for

example, for the purposes of undertaking the comparison inherent in condition 5 (for a claim

under section 10(2), as well as the like comparison required by condition 6 for a claim under

section 10(3) of the Act), in ascertaining the objective conditions under which the likelihood

of confusion is assessed, and whether there can be any representation for the purposes of

passing off.

[389]

In light of my determination of the pursuer's claims, the prejudice issue does not

arise. However, given the importance of this issue, the skill with which it was argued and

the prospect that this case may go further, it is right that I provide my decision on this

matter. The prejudice argument is predicated on two factors: (i) the uncertainty arising from

the fact that the Development is unbuilt and no goods or services are at present being

offered, and (ii) the uncertainty created by the sist of the Application before the UKIPO with

the result that it is at present unknown whether the defender may itself acquire the

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intellectual property rights it seeks. The pursuer's submission was directed to

demonstrating it had a reasonable apprehension, coupled with the legal submission that use

of a word sign (none of the three cases it cites involved a figurative sign) may justify legal

restraint, even if it is not used directly in relation to goods and services, so long as the

relevant link can be established. With respect, this does not fully engage with the nature of

the prejudice the defender has identified.

[390]

Had I otherwise found in favour on the merits of the pursuer's claims, I would

nonetheless have acceded to the defender's prejudice argument. The defender advanced the

prejudice argument as a consideration informing the court's assessment of whether there is a

likelihood or reasonable apprehension of infringement, because it would ignore the

defender's Application. I accept that submission. However, the prejudice point may be

better accommodated at the stage when the court considers the grant or refusal of the

remedy of interdict in the exercise of its discretion , rather than as a basis to exclude

evidence.

[391]

On that approach, the starting point is that the pursuer is of course entitled to

vindicate its rights. Intellectual property rights, in the form of trade marks, are no different

from any other right protected by the court (see the discussion of the Lord President,

Lord Rodger (as he then was) in William Grant & Sons Ltd v Glen Catrine Ltd 2001 SC 901

("William Grant & Sons Ltd") (at paragraph 62), a case cited to me for a different proposition,

of whether the different character of the right at issue might lead to a "freer approach" on

the part of the court). I gratefully adopt Lord Rodger's careful exposition in William Grant &

Sons Ltd of the cases of Ben Nevis Distillery (Fort William) Ltd v North British Aluminium Co Ltd

1948 SC 592 and Grahame v Swan (Magistrates of Kirkcaldy (1882) 9 R (HL) 91, which confirm

the existence of a discretion of the court to withhold the remedy a party seeks. I also attach

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no significance to the fact that the discretion to refuse has been rarely exercised or that its

grant is "exceptional". The fact that the discretion is rarely exercised does not mean

exceptional circumstances are required; it means no more than there must be sufficient

reasons to do so. In my view, this is a case in which that discretion, even if rarely exercised,

should be exercised to refuse the remedy of permanent interdict the pursuer seeks. The

considerations that have informed the exercise of that discretion and to withhold permanent

interdict in this case, are as follows.

[392]

First, I have found that as yet there has been no infringement in this case. The

pursuer's case would therefore have only succeeded because it demonstrated a reasonable

apprehension of future trade mark infringement or passing off. For aught yet seen, there

may never be an infringement. Secondly, and in my view critically, the defender's

Application is outstanding and, if granted, it would have afforded the defender a complete

defence to the pursuer's three grounds. In other words, the defender's activities would be

permissible, because protected by and pursuant to its own intellectual property rights. In

those circumstances, the grant of permanent interdict in favour of the pursuer would have

produced a legal repugnancy. To test this further, if the UKIPO granted the defender's

Application a month after permanent interdict had been pronounced, the defender would be

placed in an impossible position: conventionally, an interdict granted at the end of a case is

final and perepetual, and cannot be recalled (Lord Lovat v Macdonell (1868) 6M 330). Eeven if

some procedural means could be found to overcome that, there is a risk that some of the

issues litigated in these proceedings would be re-argued, and resolution of the parties'

dispute in accordance with their legal rights delayed. Thirdly, it is appropriate that the

UKIPO, the specialist body vested with exclusive jurisdiction to determine the defender's

Application, should be free to bring its expertise to bear and to be untrammelled by an order

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of this court (which might be seen as restricting its fullest consideration of the merits of the

defender's Application). This course of action would also neutralise any procedural

unfairness as suggested by the defender flowing from the fact that the determination of

its Application has been sisted pending these proceedings. Finally, the refusal of interdict in

these proceedings would not preclude a further action by the pursuer, if the Application is

refused and if in future the defender engages in infringing conduct in the provision of goods

and services from the Development (once it is built and open). In balancing the equities, I

also bear in mind that any prejudice to the pursuer from refusal of permanent interdict at

this stage is slight, at best, given its case was predicated on a reasonable apprehension of

future infringement. It is not at present being exposed to any actual or continuing

infringement. Finally, the interests of certainty, of enabling the UKIPO now to proceed with

its determination of the Application, outweigh any detriment to the pursuer. Should there

be any proceedings in future between the parties, they (and the court) will be able to

proceed in full knowledge of their intellectual property rights and which, at present, is a

matter of speculation in respect of the defender's. For these reasons, and in the exercise of

my discretion, I would have found that it was not in the interests of justice (to use the phrase

from the English cases) to grant the pursuer's permanent interdicts had I otherwise found in

its favour. Putting it in more familiar terms, I would have exercised my discretion to refuse

the pursuer the remedy of a permanent interdict.

[393]

There is one final matter I must address before turning to the remedies sought in the

counterclaim.

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The scope of the pursuer's interdicts directed against the defender's Other Classes

[394]

In the event the pursuer had succeeded and I had been prepared to grant the

interdicts it sought, their scope would have been modified, to accommodate two points

made by the defender.

The first point is that until the registration of the 2018 Marks, the only class

covered by the pursuer's Original Mark was class 33 for Scotch whisky. The

defender does not propose to use the "Tomatin Trading Company" sign on Scotch

whisky and it submits that, given that there is no similarity between the respective

goods as required in section 10(2) of the Act (see condition 5), this is fatal to the

pursuer's case of trade mark infringement of the Original Word Mark. The pursuer

did not engage with this submission, which I accept as well-founded; and

I have distinguished between the Additional Classes and the defender's

Other Classes in order to recognise that, in respect of the latter, there is no overlap

between the classes covered by the pursuer's Marks and the defender's Application.

The overlap is only in respect of the Additional Classes. In light of this, the defender

contends that, while there is some similarity between the goods or services for which

the 2018 Marks are registered, many of the defender's proposed activities are not

similar to the goods and services for which the 2018 Marks are registered, for

example, class 43 (for hotels, holiday and tourist accommodation and hospitality

services (accommodation), and which is not covered by the description of the

pursuer's activities under this class: see para [6], above); and classes 16, 21, 25, 29, 30,

32 and 45. It contends that there is no similarity between these respective goods or

services, as required in section 10(2) of the Act. The defender's contention is that,

again, this is fatal to the pursuer's case of trade mark infringement of the 2018 Marks

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under that provision in relation to the goods and services falling within the Other

Classes. I also accept this submission as well-founded.

It follows that, if any interdict had been granted for infringement of the statutory grounds, it

would have been necessary to ensure that it was restricted so as not to preclude the

defender's activities under these classes or its Application in respect of the Other Classes.

Consideration of the remedies in the Counterclaim

[395]

A similar issue of the scope of the court's order arises, in respect of the invalidation

of the pursuer's 2018 Marks. In final submissions, the pursuer objected to the defender's

"blanket" approach to invalidity, namely that it sought invalidation of the 2018 Marks and

all the specified uses (see para [6], above). This ignored the question of whether the pursuer

had established any distinctiveness for one or more of these uses and which, therefore,

should not be invalidated. It is appropriate that I first afford parties an opportunity to

address the Court on this matter.

Decision

The principal action

[396]

The pursuer has failed in all of its claims for infringemen t, whether founded on the

statutory grounds or on passing off. In any event, the defender had established the defence

under section 11(2), had it required to rely on it.

The Counterclaim

[397]

The defender has succeeded in its claim for invalidation of the 2018 Marks on the

grounds of bad faith. It has failed in its case for invalidation of the 2018 Figurative Mark on

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the geographical origin ground under section 3(1)(c), but succeeded on this ground in

respect of the 2018 Word Mark. It has failed on the public policy ground under

section 3(3)(a) to invalidate the 2018 Marks.

By order

[398]

Given the multiplicity of the issues, parties requested that the court issue its decision

in principal and otherwise put the case out by order for discussion of the terms of the

interlocutor. I shall do so. I reserve all question of expenses meantime. It remains for me to

thank counsel for their skilful presentation of what was a case of some complexity.