Glenfiddich Trademark Opposition Is Scotched

William Grant & Sons, makers of Glenfiddich single malt Scotch, the world’s best selling single malt, has failed in its attempt to object to a trademark registration for Glenfield, a new blended whisky.

An Indian drinks company, based in Mumbai, is looking to expand in to the UK and part of the plan for this expansion is the sale of a blended whisky which they call Glenfield. They applied to register Glenfield as a trademark for a blended whisky in class 33, which relates to alcoholic beverages. A representation of the applied for trademark is below.

William Grant opposed the registration on the basis of their earlier marks for Glenfiddich, also in class 33 and said that the similarities between the two marks would lead to confusion for customers.

This argument was based on the similarities of the names and also the fact that both marks feature images of stags. It was also put forward that Glenfield uses the same colours (green and gold) on its label as Glenfiddich.

These arguments were rejected by the Intellectual Property Office. In respect of the words, the IPO held that the only similarity was the term ‘Glen’ which in this context refers to a narrow valley, especially in Scotland or Ireland, and so cannot of itself be distinctive. The IPO felt that this would only be understood by customers as an allusion to Scotland and not to any particular brand. Beyond ‘Glen’ the IPO held that there was no conceptual similarity between words in the marks such that the applicant’s mark would not even bring Glenfiddich to mind.

Turning to the presence of stags on both labels, the IPO felt that the respective representations were sufficiently different for there to be no risk of confusion. In particular it was noted that the Glenfiddich mark features a single stag whereas the Glenfield mark features two rampant stags either side of a shield. In respect of colour, the IPO acknowledged the similarities but said that, given the other differences set out above, these would do nothing more than fleetingly bring the Glenfiddich mark to mind. There would be no confusion.

Glenfiddich is a world famous brand and may have expected to enjoy more success with this opposition. The IPO Hearing Officer has been fairly unequivocal in his assessment of its opposition, however William Grant has other avenues available to it and this is potentially only the first stage in what could turn in to a long running dispute. It will be interesting to see whether William Grant feel that this new entrant is enough of a threat to their brand to consider taking the matter further.

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