Grant & Sons Ltd & Ors v Glen Catrine Bonded Warehouse Ltd & Ors [1999] ScotCS 195 (18 August 1999)

Grant & Sons Ltd & Ors v Glen Catrine Bonded Warehouse Ltd & Ors [1999] ScotCS 195 (18 August 1999)

The interdict sought does not offend Article 29 EC Treaty as it applies equally to domestic and export trade, is objectively justified to prevent passing off and consumer confusion, and is proportionate. Even if Article 29 were engaged, Article 30 would justify the order as necessary to protect commercial property and prevent unfair competition. The defenders' late reliance on the 'European point' was procedurally unfair and unsupported by pleadings or evidence. The order is to be restricted to prevent passing off by use of the name 'Grant's' or colourably similar names on products, and the defenders are to deliver up infringing materials. Expenses are awarded on a party and party basis...

Citation
[1999] ScotCS 195
Parties
Pursuers: William Grant & Sons Limited and Others; Defenders: Glen Catrine Bonded Warehouse Limited and Others
Jurisdiction
Scotland
Judgment Date
18 August 1999
Procedural Posture
Civil (passing Off / Intellectual Property) / Post Proof, by Order Hearing on Form of Order and Expenses
Outcome
Interdict granted in restricted form; defenders ordered to deliver up infringing materials; expenses awarded on party and party basis with additional fee and certification of skilled witnesses.
Legal Topics
Passing Off, Interdict (injunction), Trademark/brand Protection, Export Restrictions, Community Law (articles 28 30 EC Treaty), Remedies, Expenses (costs)
Intellectual Property European Union Law Commercial Law Passing Off Interdict (injunction) Trademark/brand Protection Export Restrictions Community Law (articles 28 30 EC Treaty) +2 more

Case Brief

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Parties

William Grant & Sons Limited and Others

Pursuers

Glen Catrine Bonded Warehouse Limited and Others

Defenders

Procedural Posture

Civil (passing Off / Intellectual Property) / Post Proof, by Order Hearing on Form of Order and Expenses

Legal Issues

  1. 1 Whether the interdict (injunction) sought against the defenders' use of the name 'Grant's' offends Articles 28, 29, and 30 of the EC Treaty (Treaty of Amsterdam) as an unlawful export restriction;
  2. 2 Whether the order should be restricted to Scotland or extend to other EU Member States;
  3. 3 Appropriate form of interdict to prevent passing off;

Ratio Decidendi

The interdict sought does not offend Article 29 EC Treaty as it applies equally to domestic and export trade, is objectively justified to prevent passing off and consumer confusion, and is proportionate. Even if Article 29 were engaged, Article 30 would justify the order as necessary to protect commercial property and prevent unfair competition. The defenders' late reliance on the 'European point' was procedurally unfair and unsupported by pleadings or evidence. The order is to be restricted to prevent passing off by use of the name 'Grant's' or colourably similar names on products, and the defenders are to deliver up infringing materials. Expenses are awarded on a party and party basis...

Court Disposition

Interdict granted in restricted form; defenders ordered to deliver up infringing materials; expenses awarded on party and party basis with additional fee and certification of skilled witnesses.

Orders

  • Interdicts defenders from passing off or enabling others to pass off as and for the pursuers' products any gin, vodka or other alcoholic beverage not of the pursuers' blending or merchandise, particularly from labelling, packaging, marketing, exporting, wholesaling or retailing such products under the name 'Grant's'...
  • Ordains defenders to deliver up to pursuers within 14 days all bottles, labels, caps, cases, cartons and similar items in Scotland bearing the name 'Grant's' or colourably similar names.