Glencairn sues retailer over trademark violation
Crystal maker Glencairn has taken legal action against California-based online retailer Wine-n-Gear for allegedly imitating its whisky glasses and infringing on its trademark.
Family run glassware and decanter producer Glencairn, based in South Lanarkshire, Scotland, is said to have created the ‘world’s first official whisky glass’, which it introduced to market in 2001.
The glass was created with input from master whisky distillers and features a short and narrow stem and patented shape, which allows for drinkers to swirl the contents and impart oxygen into the spirit.
The glass is endorsed by the Scotch Whisky Association, with more than 40 million units of the glass sold worldwide – 1.7m of which have been sold in the US.
However, now the producer alleges that US firm Wine-n-Gear has been manufacturing and selling a host of whisky-related products bearing the Glencairn name – a trademark that the Scottish company has held in the US for more than 20 years – in a bid to ‘falsely and misleadingly’ advertise Wine-n-Gear’s goods as genuine Glencairn products.
In the complaint, first filed in the US District Court for the Eastern District of California on 7 October, Glencairn alleges at least four products sold by Wine-n-Gear, including a whisky glass and a tasting glass gift box, used the word Glencairn and employed images of a whisky glass identical to Glencairn’s product.
This followed Glencairn’s legal representatives at O’Melveny & Myers sending a cease and desist letter to the company in September, which complained about its actions and demanded that it promptly bring its “unlawful activity” to an end.
According to Glencairn’s complaint, the company never responded, however its website was updated to remove the word Glencairn from its marketing materials.
Glencairn notes that it has invested heavily in its trademarks, which stand for premium and speciality whisky products that have helped Glencairn achieve an “exemplary public reputation”.
As a result, on 3 December, Glencairn filed for a permanent injunction against Wine-n-Gear, seeking to stop the manufacturing or selling the “unlawful” products, or from using Glencairn’s intellectual property.
The court filing states: “Wine-n-Gear is knowingly exploiting the commercial success and global recognition of the Glencairn trademarks to Wine-n-Gear’s commercial advantage by advertising and selling the infringing products and using the Glencairn trademarks to sell those products.
“Wine-n-Gear’s copying of the Glencairn trademarks is likely to deceive, confuse, and mislead actual and prospective purchasers before, during and after purchase into believing that the whisky glass sold by Wine-n-Gear is manufactured or authorised by, or in some manner associated with, Glencairn.”
It further claims the Californian firm “knowingly, intentionally, and wilfully copied” the Glencairn name, and misappropriated its investment, goodwill and market share by advertising under the Glencairn name to sell the products. It states Glencairn believes Wine-n-Gear has sold thousands of the infringing products, allowing it to earn hundreds of thousands of pounds, with Glencairn losing sales and market share as a result.
As such, Glencairn has asked the court to award it “exemplary” damages, and for the profits made by Wine-n-Gear from its sales of the goods to be passed to Glencairn.
O’Melveny & Myers have asked the court for the case to proceed to a jury trial.
Both Glencairn and Wine-n-Gear were approached by The Spirits Business for comment, but neither responded.
In December, we explored how spirits companies and producers can protect themselves against copyright and trademark infringements, and where the law draws the line on copycats.
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