Glenkeir Whiskies Ltd. is a Glasgow based company that is a retail chain stocking a range of Scotch, Irish and world whiskies, plus other spirits. They applied for registration for the mark “THE W CLUB” on 2nd August 2016 and the trademark was published on 11th November 2016. The UKIPO invalidated the registration of “THE W CLUB” mark on some specific classes of goods and services.
The application was opposed by Starwood Hotels and Resorts Worldwide LLC. The opposition is based upon Sections 5(2) (b), 5(3) and 5(4) (a) of the Trade Marks Act 1994. Section 5 of the Act states the provisions about the grounds on which registration of a trademark is not possible.
Glenkeir Whiskies Ltd. owns the UK’s largest chain of whisky stores, The Whisky Shop, which has grown to over 22 branches nationwide. The stores offer house-bottled whiskies under the Glenkeir Treasures label, including expressions bottled in-shop direct from the cask. Glenkeir applied for registering its “THE W CLUB” mark with the IPO in Classes 16, 33, 35, 41 and 43.
The application was opposed on the mark “The W” and “W”. The oppositions were also based on the classes of goods and services. Starwood Hotel and Resorts is a subsidiary of Marriott International. W is one of its trademarks. While coming to the Judgement phase the Court emphasized the nature of goods and services.
The opponent opposed the services of Class 16. The Court was not convinced by the evidence presented by the opponent. Class 16 includes printed matters, magazines, newsletters, pamphlets, and related materials. Regarding this class, the Court pointed out that the opponent failed to demonstrate the genuine use of the “W” mark. The Court observed that both the user and registered mark didn’t alter the distinctive character of the “W” mark.
Next opposition was based on goods of Class 32, which includes alcoholic beverages. The Court pointed out that users and methods of use are identical. Additionally, both the goods shared the same trade channel and retailers. On this ground, it was held that the applicant’s alcoholic beverages were similar to the beers of the opponent. Regarding club services under class 41, the Court concluded that similarity between the applicant and the opponent was visible.
While comparing the marks of both parties the Court stated that medium level of aural, visual and conceptual similarities existed. The Court also stated that the likelihood of confusion could take place among consumers while visualizing and hearing about the mark.
On 26th July 2019, the opposition succeeded in connection with class 33, 35, 41 and 43. The Court ordered that the applicant can register their mark under Class 16, 35, 41 and 43 with respect to goods and services including printed materials, advertising, cultural and sporting activities, and consultancy services relating to the purchase of whisky.
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