Exclusive:Acclaimed Scotch whisky glassmaker launches international legal action over 'imitations'

It is one of the most successful Scottish exports of the 21st century, appealing to tens of millions of whisky aficionados around the world in search of a glass that will enhance their favourite tipple.

Now, one of the nation’s most acclaimed crystal decanter and glassware manufacturers has gone to court in an attempt to prevent a US firm from profiting from the sale of counterfeit copies of its most iconic product.

Glencairn Crystal, a family-run firm based in South Lanarkshire, has become a leading name among whisky connoisseurs thanks to its eponymous nosing and drinking glass. Designed by the company’s founder, Raymond Davidson, with input from a series of master distillers, the glass features a narrow rim that funnels aromas towards the nose, with a short narrow stem and patented shape helping drinkers to swirl the contents and let more oxygen in.

Since being introduced in 2001 to fill a void in the whisky tasting market for a dedicated glass, the product, described by Glencairn as “the world’s first official whisky glass”, has won a host of awards and proved to be a roaring commercial success.

The Scottish firm is best known for producing the world's first official whisky glass. | bizoo_n - stock.adobe.com

As well as being endorsed by the Scotch Whisky Association (SWA) and used by distilleries around the world, more than 40 million of the glasses have been sold, with annual sales to the US alone in the region of 1.7 million. The company’s latest annual accounts show a post-tax profit of nearly £4m based on a turnover in excess of £17.8m.

But according to Glencairn, that interest from the American market has come at a price. In legal action brought in a US court, the Scottish company has accused a little-known Californian firm of manufacturing and selling a host of whisky-related products bearing the famous Glencairn name.

Lawyers for the East Kilbride company, which also produces a range of specialist mixer glasses and gin goblets, claim the US entity, Wine-n-Gear, has imitated Glencairn’s whisky glass, infringing and misappropriating its exclusive rights and goodwill. It has also been claimed the rival US company has used the Glencairn trademark - held by the Scottish firm in the US for more than two decades - without permission to falsely and misleadingly advertising Wine-n-Gear’s goods as genuine Glencairn products.

Neither Glencairn nor Wine-n-Gear responded to enquiries from The Scotsman. But the Scottish firm’s complaint, filed in the US District Court for the Eastern District of California, 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. It points out 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”.

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.”

The filing adds: “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.”

Glencairn's glasses are used by distilleries around the world.

It claims the firm “knowingly, intentionally, and willfully 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.

The legal action seeks to permanently stop the California-based company from manufacturing or selling the “unlawful” products, or from using Glencairn’s intellectual property. It also asks the court to award Glencairn “exemplary” damages, and for the profits made by Wine-n-Gear from its sales of the goods to be passed to Glencairn, which is now overseen by Mr Davidson’s sons, Paul and Scott, and a team of more than 70 employees.

On its website, Wine-n-Gear describes itself as an importer, distributor, wholesaler and retailer of fine wine accessories. It was founded by Frédérique Mary, who according to the site, has more than 30 years’ experience of working in custom branding and wine accessory importation. The firm’s owner is Arthur Morgan.

In September, Glencairn’s legal representatives at O’Melveny & Myers, a multinational law firm, sent a cease and desist letter to the company, complaining about its actions and demanding that it promptly bring its “unlawful activity” to an end. According to Glencairn’s complaint, the company never responded, but later updated its website advertising to remove the word, Glencairn, from its marketing materials. O’Melveny & Myers have asked the court for the case to proceed to a jury trial.

It is one of numerous legal actions to have been launched by those involved in the Scotch whisky sector to protect their products and reputation. There are strict legal provisions which govern how Scotch whisky is made, marketed and exported, with the SWA helping to enforce the rules across its global markets. It has registered intellectual property rights in over 100 markets around the world to ensure the drink is officially recognised as a Scottish product, and produced according to traditional methods.

In September, The Scotsman revealed how the association, whose members include well-known brands such as Johnnie Walker, Glenfiddich and Glenmorangie, had reached a court settlement after challenging a US firm, Arkay Beverages, from producing or selling its so-called ‘Scottish whisky’ style drink. The beverage in question did not contain any alcohol, and, the SWA claimed, was actually produced in Mexico.