Scotch Whisky Association legal chief on protecting a £4bn industry

Landing a job at an organisation whose sole purpose is to promote, protect and represent the interests of the scotch whisky industry sounds like a dream come true for any lover of the so-called water of life. But, as Alan Park, director of legal affairs at the Scotch Whisky Association, points out, the chances of him getting to sample the good stuff in the line of duty are slim to none.

“Most of the bottles that come across our desks are counterfeit,” Park explains. “We test around 200 bottles a year, which go to our lab in Edinburgh to be analysed. To comply with the definition of scotch whisky the product must be produced from cereals, be distilled at a certain strength, be matured for three years minimum and have an alcohol content of 40 per cent. You can test for all those things and you’d have to be a pretty good chemist to get anything close to a genuine product in the laboratory.”

‘One of the country’s top IP teams’

Nevertheless, counterfeiting remains a problem for the scotch whisky industry, which is worth £4bn a year in export value to the UK economy. It is no surprise, then, that Park says his team, which numbers five lawyers including himself plus a paralegal, “has to be one of the top IP teams in the country”.

“We’re a trade association and we represent about 95 per cent of all scotch whisky volume produced,” says Park. “The description of scotch whisky is protected around the world and we make sure no-one is making a product that is being passed off as scotch. As part of that we monitor every trademark database in the world and oppose around 300 trademark applications at any one time.”

“In 2005 we found fakes in Australia and by 2009 it had become the worst market for fakes in the world”

The purpose of the monitoring is to make pre-emptive strikes against any company trying to register a mark for a non-scotch product that uses images of Scottish scenery or names such as Edinburgh Castle in a bid to pass itself off as the real thing.

With scotch whisky traded in practically every country in the world, it must be protected on a global basis too. While Park’s team splits the world in two when dealing with these issues, with two of his lawyers taking one half and the other two the other half, the fact they are generally dealing with 300 trademark applications and 60 court actions at any one time means the association has working relationships with more than 50 external law firms.

“Many of our law firms have been with us for many years – in some cases, decades,” says Park. “It’s critical that the lawyers who deal with us understand the scotch whisky industry and understand our protection work. I value very highly the senior lawyers I deal with around the world. Our French and Belgian lawyers, for example, have been acting for us for more than 25 years. They know the business intimately and they actually report suspicious products to us because they know what they’re looking for.”

Park and his team supervise their external lawyers closely, in part to ensure they get up to speed with the issues quickly and in part because the association is, he says, “the guardian of the regulatory framework”.

“We ensure that the laws that impact scotch are fit for purpose and we lobby enforcement authorities and governments worldwide,” Park explains.

Much of scotch whisky’s global protection comes about through free-trade agreements between the EU and other countries. To say that the UK’s impending exit from the EU following the Brexit referendum is increasing the workload of Park and his team is an understatement.

“From a general point of view the big issue is uncertainty about the trading model we’ll have with the EU,” Park says. “If we stick with the European Economic Area model then the laws in place will remain. If we go down the free-trade agreement route we’d no longer be subject to those EU laws and would have to see which laws we want to keep.”

Stressing that the latter route is a huge exercise, Park say that as the scotch industry needs clarity as soon as possible the onus is on his department to ensure the Government negotiates the best possible deal for the sector.

“We’ve contacted the relevant government departments to express our concerns and we’ve been commenting on the EU laws that need to be in place in the UK,” he says. “The definition of quality that applies in the EU also applies in the UK, but that would no longer apply [following Brexit] so we have to ensure we have a law with a quality definition for whisky.

“More widely, scotch whisky is protected by free-trade agreements between the EU and countries in the Americas as well as places like Korea. We need to plug those gaps with other means unless the law that’s in place is grandfathered – and we can’t just wait to see what happens.”

Not that Brexit or even the uncertainty it poses is the biggest challenge Park and his team faces, with the global aspect of the work meaning they can never know “when or where the next problem will come from”.

“One problem can spawn a massive market failure – in 2005 we found fakes in Australia and by 2009 it had become the worst market for fakes in the world.

“The challenge is managing where you’re going to be in the next quarter,” he concludes.