31 July 2019TrademarksRory O'Neill

Partial victory for Marriott brand in whisky TM opposition

The UK  Intellectual Property Office (IPO) has partially invalidated a trademark owned by Scottish distillery  Glenkeir Whiskies, after an opposition by a subsidiary of hotel group Marriott International.

Glenkeir applied to register ‘The W Club’ mark with the IPO in 2016 in classes 16, 33, 35, 41, and 43 covering a wide variety of goods and services including alcoholic beverages except beers, entertainment, food and drink, and printed publications.

Starwood Hotels and Resorts, owned by  Marriott International, opposed the mark, relying on a set of earlier marks for ‘The W’ and a logo for its ‘W’ hotels brand.

Glenkeir’s mark survived the opposition in classes 16, 35, 41, and 43, after Starwood failed to establish any similarity between its own marks and Glenkeir’s with respect to goods and services including printed materials, advertising, cultural and sporting activities, and consultancy services relating to the purchase of whisky.

As part of its evidence of genuine use of its earlier ‘The W’ marks, Starwood submitted flyers promoting events at its hotels operating under the brand, as well as an internal report.

According to the IPO, this was insufficient to prove any genuine use in class 16 for ‘publications, newsletters, [and] printed matter in the field of hotels’.

“These are not evidence of the opponent conducting a business in respect of such goods,” the IPO said.

For other goods and services, such as alcoholic beverages, the IPO ruled in favour of Starwood.

Glenkeir’s mark covered ‘alcoholic beverages (except beers)’. Despite the fact that ‘beer’ was omitted, Starwood claimed that the goods and services were identical to its own mark for ‘beer’.

The IPO agreed that the marks were similar in this respect, noting that “the intended purpose of both is a pleasurable drinking experience, which may include the intoxicating effects of alcohol”.

Glenkeir’s mark was invalidated for goods and services in classes 33, 35, 41, and 43 for goods and services including alcoholic beverages and services for providing food and drink.

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