February 18, 2010
In a recent High Court case, the producer of Smirnoff vodka was able to prevent a rival manufacturer using the name “VODKAT” to describe a blend of vodka and fermented alcohol. For the time being at least “vodka” will enjoy the same protection as Champagne, sherry and advocaat.
Background
Diageo brought a passing off action against Intercontinental Brands (IB) after IB began selling VODKAT, a mixture of vodka and neutral fermented alcohol with an ABV of 22%. Initially, VODKAT was sold in a bottle reminiscent of a vodka bottle with white lettering on a red background.
Under European legislation, vodka is carefully defined as “a spirit drink produced from ethyl alcohol of agricultural origin……and……the minimum alcoholic strength by volume…….shall be 37.5%”. VODKAT came on to the market in 2005 and sold 13 million bottles in 5 years. Diageo alleged that IB was selling VODKAT as vodka when it only had an AVB of 22%.
The judgment
Mr Justice Arnold found that IB had passed off VODKAT as vodka, for the following reasons:
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“Vodka” denoted a clearly defined class of goods, as defined in the European legislation
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The UK public regarded “vodka” as denoting a particular class of alcoholic drink, distinguished from other spirits
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“Vodka” had acquired a reputation as a drink with certain recognisable qualities, which in turn gave rise to protectable goodwill
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IB’s marketing of VODKAT using the red and white get-up and allowing it to be displayed alongside vodka on supermarket shelves was designed to deceive a substantial number of consumers into thinking that it was vodka
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There was evidence of actual confusion amongst journalists and consumers and VODKAT had been sold as vodka in pubs and bars
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There was damage in the form of lost sales due to confusion and in the likelihood of erosion of the distinctiveness of the term “vodka” if it could be applied to lower strength products
Although the final form of Court order has not been issued, it is interesting to note that the Court rejected IB’s argument that vodka would need a particular cachet or a reputation for superiority to benefit from protection.
For more information on Intellectual Property please contact Estelle Dimelor on 01295 204106 or email edimelor@se-law.co.uk
