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Passing off: Lookalikes 

This is a case of extended passing off. The issue shortly stated was whether vodka was entitled to the same protection as champagne, sherry, advocaat, whisky or Swiss chocolate.

Arnold J reviewed that authorities and dismissed the defendant’s argument that only descriptive names with cachet (e.g. champagne) are protected.

The defendant, IBC, had launched VODKAT in 2005. VODKAT was a colourless, tasteless alcoholic drink. But it was not vodka, rather a vodka blend (less percent alcohol). IBC marketed the drink in a clear bottle with red and white and then black, red and white labelling evocative of Russian heraldry.

VODKAT was very popular so by the time of the trial in 2009, 13 million bottles had been sold.

Arnold J found that passing off had been made out. Regarding the necessary three elements of passing off:

 

1. Goodwill or reputation

“Vodka” denoted a clearly defined class of goods and had reputation as denoting a particular product. Vodka had a reputation giving rise to protectable goodwill in the UK.

 

2. Misrepresentation

VODKAT did contain vodka and could have been presented in a way that made clear what it was. But that was not the case. The product was misleadingly described, presented in a “vodka-type” get up, no instructions as to its marketing were issued to the trade and the product was promoted and advertised in a way that suggested it was vodka.

The marketing of VODKAT was calculated to deceive a substantial number of persons that it was vodka.

The evidence showed confusion amongst pubs and bars that would contribute to customer confusion. There was direct evidence of confusion from four members of the public. Also trading standards had issued a press release talking about the sale of “counterfeit VODKAT vodka”!

 

3. Damage

Even if Diageo could not establish lost sales, VODKAT was likely to erode the distinctiveness of the vodka name.

Diageo North America Inc v Intercontinental Brands Corp [2010] EWHC 17 (Ch), Arnold J, 19 January 2010