James Martin denied spirits trademark

TV chef James Martin has had an application to use his name on alcoholic and non-alcoholic drinks products rejected, and must pay a fine to Macdonald & Muir, the owner of Scotch whiskies Glenmorangie and Ardbeg.

English chef James Martin, who rose to fame presenting TV show Saturday Kitchen for the BBC, has been refused permission to use his name on a range of products, including spirits.

Not only has The UK Intellectual Property Office (UKIPO) denied his request, but he has also been ordered to pay £1,900 towards the legal costs of Macdonald & Muir, the whisky company who opposed it.

Historical entanglement

Edinburgh-based James Martin & Co once produced a popular range of blended whiskies, but was acquired in 1912 by Macdonald & Muir, the forerunner to the Glenmorangie Company, and continues to be a subsidiary of the latter, which also owns Scotch whisky brands Glenmorangie and Ardbeg, though it has often been subscribed as a “dormant” or “non-trading” subsidiary.

Macdonald & Muir was itself acquired by French luxury goods firm LVMH in 2004 for £300 million following a bidding war with competitors including Pernod Ricard after The Macdonald Family decided to sell its 52% controlling stake in the business.

During the recent legal dispute with chef James Martin, Macdonald & Muir argued that a small-production, exclusive whisky named James Martin’s is still made today, though chief executive Caspar MacRae explained that the product is not mass produced due to its ageing being “significantly longer” than other products. He claimed that 11,382 bottles of the whisky were made and exported between 2017 and 2022.

MacRae’s legal team also supplied invoices for a UK packaging company, alongside photos of labels being applied to bottles, as evidence in the case.

The ruling

In its ruling UKIPO’s said it found that “the opponent has made use of both marks in relation to whisky. The high price point mentioned means that these are not mass-market goods which will be sold in high volumes because demand will be more limited, and the volumes which have been sold, over a sustained period, are sufficient.

“The marks are identical. I have found the remaining goods and services to range in similarity from a very low to a fairly high degree.

“Due to the interdependency principle, the identity of the marks together with the medium degree of inherent distinctiveness will offset the lower levels of similarity between the goods and will mean the average consumer is likely to mistake one for the other. Therefore, I consider there to be a likelihood of direct confusion.”

A spokesperson for The Glenmorangie Company said: “We are pleased with the decision and the confirmation that it provides in relation to our James Martin brand.”

 

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