Glenfiddich loses Glenfield trademark disputeBy Melita Kiely
The world’s biggest selling single malt Scotch whisky, Glenfiddich, has lost a trademark battle with an Indian company accused of copying its brand.
Indian businessman Vivek Anasane wants to expand his Mumbai-based drinks company to the UK with the launch of a Scotch whisky called Glenfield. He applied to register the name of the blended whisky as a trademark.
However, Glenfiddich owner William Grant & Sons opposed the application, arguing Glenfield is “visually and phonetically highly similar to Glenfiddich” due to its use of the prefix ‘glen’ and the letters ‘f’ and ‘d’.
William Grant & Sons continued to argue that consumers would be likely to associate the Glenfield mark with Glenfiddich “leading to an unfair benefit”. It also said it would “cause detriment” to Glenfiddich’s reputation and reduce the value of the brand “affecting the purchasing decisions of consumers”.
Anasane filed a counterstatement denying the claims from William Grant & Sons. In his defense, Anasane provided a list of third-party marks on the UK register of trademarks that use the word ‘Glen’.
He also suggested “no one can claim the right in the world Glen because it describes ‘a narrow valley, especially mountain’”.
Mark Bryant, trademark hearing officer for the UK Intellectual Property Office (IPO), which looks after trademark disputes, ruled in favour of Anasane.
Bryant said: “The relevant average consumer will generally be the whisky drinking general public who will pay a normal level of care and attention during the purchasing process, being neither particularly low or high.”
He concluded that each brand shared a “very low level of visual and conceptual similarity and a low to medium level of aural similarity”.
Though Bryant acknowledged there were certain aspects that “point towards a finding of a likelihood of confusion”, he added that “these factors are more than offset by the differences between the marks”.
“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,” said Bryant.
The Spirits Business has contacted William Grant & Sons for comment.
Earlier this year, lawmakers ruled that a German whisky infringes on the geographical indication of Scotch whisky by using the world ‘Glen’ in its name.