Glenfiddich loses legal battle against new Indian-owned Scotch
William Grant & Sons has lost a trademark battle against a new blended Scotch whisky brand called Glenfield after accusing it of adopting similar labelling to its Glenfiddich brand.
Indian businessman Vivek Anasane filed a trademark application for blended Scotch whisky brand Glenfield with the UK Intellectual Property Office in January 2018.
Anasane had intended to launch his Mumbai-based drinks company in the UK with the release of the new whisky.
After filing the application, however, distiller, blender and owner of Glenfiddich, William Grant & Sons, opposed the move. As part of its case, the family-owned Scottish spirits group stated that Glenfield’s trademark was “visually and phonetically highly similar” to that used by Glenfiddich.
Both labels have a dark green background, bordered with gold, with white lettering and the silhouette of a stag on the label.
William Grant & Sons argued that Glenfield’s label was liable to create customer confusion, with Glenfield benefitting from the reputation of single malt Glenfiddich. It expressed concern that Glenfield could damage the reputation of its Scotch brand, “particularly if the goods offered are of a lower quality than the opponent’s goods”.
Anasane refuted William Grant & Sons’ claims, adding that no brand could trademark the word ‘glen’ as it refers to a place.
That said, The Scotch Whisky Association recently won a six-year legal battle to stop a German distillery from using the word on its bottles, after calling it “misleading” to the consumer and stating that it implied a Scottish origin.
In this case, however, the IPO sided with Anasane.
Trademark hearing officer Mark Bryant said: “Conceptually, other than the common occurrence of Glen, meaning ‘a narrow valley, especially in Scotland or Ireland’, the respective marks have no conceptual similarity.
“The common occurrence of the Glen element is likely to be readily understood by the average consumer as an allusion to Scotland.
“This is likely to be the overriding perception of the consumer and I am of the view that the applicant’s mark will not even bring the opponent’s mark to mind let alone confuse the consumer into believing that the goods sold under the respective marks originate from the same or linked undertaking.
“Next I turn to consider the question of misrepresentation of the opponent’s label mark.
“The presence of a device of a single stag exhibits differences to the applicant’s heraldic device featuring two stags rampant that are unlikely to go unnoticed.
“In respect of the colour combinations, these provide some similarity and may serve to fleetingly bring the other mark to mind, but the significant differences, particularly in the dominant elements Glenfiddich and Glenfield are such that I find the differences outweigh the similarities and the applicant’s mark will do no more than bring the opponent’s mark fleetingly to mind.”
Anasane’s established his company in 2017 and after expanding within the Indian market, he now wishes to launch a business in the UK.