Scots laird's luxury menswear firm goes to court in trademark fight against US firm

Grants of Dalvey, which is run by Sir Patrick Grant, a businessman and major landowner in the Highlands, has enlisted lawyers in the US as part of its fight against a similarly named gift retailer it accuses of using its trademark without permission.

The 70 year-old, the 14th baronet of Dalvey, is the owner and managing director of Grants. The firm can trace its origins back to the late 19th century, and has made its name selling high-end gifts and goods for “independent and discerning” men.

But now the firm has embarked on legal action stateside in an attempt to protect its brand and recoup what it says are lost earnings as a result of the alleged trademark breach.

Documents filed with the US District Court in Rhode Island show lawyers acting for Grants have served a complaint against a company called Dalvey & Co under what is known as the Lanham Act, a federal law in the US covering intellectual property rights.

Grants, based in Alness, near the Cromarty Firth, claims the Pennsylvania company has been selling goods throughout the US using an unregistered ‘Dalvey & Co’ trademark, which, its lawyers argue, is likely to cause confusion and infringe on its own registered trademarks.

The firm now known as Grants of Dalvey dates back to 1897, when it was founded as Duncan MacRae, a musical instrument manufacturer specialising in the production of bagpipes. It was acquired in the 1970s by Sir Patrick, who subsequently oversaw its transition to a design-led men’s accessories brand.

Since producing its first accessory, a flask, its offering has expanded significantly, with the firm engraving thousands of its products purchased as gifts for occasions such as birthdays, weddings, anniversaries and retirements. Its range of bespoke goods includes pocket watches, flasks, compasses, barometers, cufflinks and travel clocks.

The Scottish firm’s heritage forms part of its arguments in the US legal action. The eight-page-long complaint describes Grants as “a world leader in manufacturing high-end, enduring pieces of exceptional design and quality for discerning customers around the world”.

The complaint alleges Dalvey & Co has been using an unregistered trademark of the same name to brand curated gift boxes containing several of the goods already trademarked by Grants, including clothing, journals, toiletry bags and notepads. It also alleges the US company’s website constitutes a “direct infringement” of its intellectual property.

It says the advertising and promotional material used by Dalvey & Co misrepresents the nature, characteristics and qualities of its products sold under the Dalvey trademark, adding the misrepresentation has caused “injury” to Grants, on the basis it had lost customers and sales, with “additional unnecessary business expenses”.

The US firm’s use of the Dalvey & Co trademark, the filing states, is likely to cause Grants “irreparable harm financially” and “damage” its business reputation. It goes on to claim the US products harm the perception consumers have of the “unique” products offered by Grants.

“[The] plaintiff is known in the luxury item industry and has goodwill in the industry,” claims the complaint, filed on behalf of Grants by Alan Feeney, a US attorney specialising in intellectual property issues. “[The] defendant is using plaintiff’s Dalvey marks on its products, and consequently on its website, and in other marketing materials, without permission, to trade off the goodwill of plaintiff.”

The complaint asks the court to rule that Dalvey & Co has infringed the trademarks registered by Grants, and to order the US company to cease making and selling any goods that contain the mark, with all existing products to be recalled. The submission also calls for compensation representing profits earned by Dalvey & Co, as well “exemplary damages” and expenses.

Records maintained by the US Patent and Trademark Office show Grants is the owner of at least four trademarks covering a range of goods, including clocks, business card cases, wristwatches, and pocket squares. The oldest trademark was registered two decades ago.

According to the most recent accounts for Grants of Dalvey filed with Companies House, it has nearly £2.7m in fixed assets. The firm’s directors include Sir Patrick, the majority shareholder, as well as his two sons, Duncan and Neil.

Together with his wife, Lady Helen, Sir Patrick also owns Glen Dessary, a 15,000-acre sporting estate that lies between the head of Loch Arkaig and Loch Nevison on the east side of the Knoydart peninsula, where the couple offer wilderness adventure holidays and wedding packages.

The Grant baronetcy dates back to the 17th century, when Sir James Grant, a prominent Scottish lawyer, was given the title. Several holders of the baronetcy have been members of parliament.

One of them – Sir Alexander Grant, the fifth baronet, and an MP for the Inverness burghs – has become notorious for his ties to the slave trade in the 18th century. When he died in 1772, his fortune included six estates in Jamaica, which totalled almost 7,000 acres and held 457 enslaved people.

By the time full emancipation came about, his great nephew, Sir Alexander Cray Grant, who served as a Tory MP, was awarded compensation worth £1.29m in today’s money for the loss of the slaves in his ownership.

Neither Grants of Dalvey nor Dalvey & Co responded to enquiries from The Scotsman.