The parties disputed the right to use various terms to describe and sell their alcoholic drinks, arguing for passing off. Diageo sought an unqualified injunction restraining ICB from advertising, offering for sale or selling or supplying any alcoholic beverage under the name VODKAT unless (1) the beverage in question was vodka with a minimum ABV of 37.5% or (2) in the case where the beverage was to be a combination of an alcoholic component diluted with a non-alcoholic component (other than water) which together formed a product having an ABV of less than 37.5%, the sole alcoholic component was vodka. Their contention before the judge was that the use of the name VODKAT either alone or in conjunction with a get-up reminiscent of vodka amounted to a misrepresentation that it was vodka or, at the very least, would do so absent a clear product description.
Held: Arnold J assessed the claim by reference to the so-called classical trinity of reputation, misrepresentation and damage which it is common ground have to be established in every case of passing-off. He found that vodka denoted a clearly defined class of goods in accordance with the 2008 Regulation.
Arnold J said: ‘It is also true that various products have been sold which contain, and are stated to contain, vodka, but which are not themselves vodka. The two principal categories of such products are vodka-containing RTDs and vodka-based liqueurs. RTDs form a well-established category of product, which is well understood by the public. On the whole, vodka-containing RTDs are marketed in a manner which clearly informs the consumer that they contain vodka rather than being vodka. In my view, the only possible exception to this in evidence is SMIRNOFF BLACK ICE in a 70cl bottle, which post-dates 2005. Even in that case, confusion is unlikely since SMIRNOFF ICE and SMIRNOFF BLACK ICE are well known to be RTDs. Vodka-based liqueurs are a very minor category. Again, they are marketed in a manner which informs the consumer that they contain, or are made from, vodka rather than being vodka. In my judgment neither of these categories detract from the existence, or definiteness, of the class of products denoted by the term ‘vodka’.’
Judges:
Arnold J
Citations:
[2010] EWHC 17 (Ch), [2010] RPC 12, [2010] ETMR 17, [2010] 3 All ER 147, (2010) 33(3) IPD 33015
Links:
Statutes:
Council Regulation 110/2008/EC
Jurisdiction:
England and Wales
Cited by:
Appeal from – Diageo North America Inc and Another v Intercontinental Brands (ICB) Ltd and Others CA 30-Jul-2010
The claimant sought to prevent the respondent from marketing its VODKAT drinks range under that name unless it contained minimum levels of vodka. It said that the name was misleading: ‘This was . . a case of . . extended passing-off where protection . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 27 September 2022; Ref: scu.392991