The creators of ‘Bad Spaniels’ chewable dog toys faced US trade mark infringement and dilution proceedings brought against them by Jack Daniel’s Properties Inc, for parodying the famous whiskey brand. The US courts wavered between which test for infringement to follow. Our Intellectual Property team examines the ultimate outcome reached by the US Supreme Court and how a similar case might be decided in Ireland.
Tennessee whiskey brand, Jack Daniel’s has recently lost its trade mark opposition before the UK Intellectual Property Office (UKIPO) against Scottish whisky brand, Jack & Victor. The UKIPO has ruled in favour of Greg Hemphill and Ford Kiernan, the creators of the Jack & Victor brand, and said the trade mark application could now proceed to registration.
Background
Hemphill and Kiernan, are a comedy duo from Scotland. Their widely popular sitcom ‘Still Game’ and associated stage shows, feature two Glaswegian pensioners, Jack Jarvis and Victor McDade, played by the show’s creators. Following the success of the show, particularly in Scotland, Hemphill and Kiernan launched a Scottish whiskey product Jack & Victor in 2021 in honour of the Still Game pensioners.
Basis for opposition
Jack Daniel’s sought to oppose the UK trade mark application for JACK & VICTOR, while relying on their own ‘Jack’ trade marks, JACK, JACK DANIEL’S and GENTLEMAN JACK which are also registered for whiskey.
Jack Daniel’s Properties, Inc. argued that by allowing the application to proceed to registration, it would allow customers to be misled or to believe that the Still Game whiskey was partially economically connected with or endorsed by them. In addition, Jack Daniel’s argued that the Jack & Victor brand would be getting an unfair advantage from or free-riding on the global reputation of the Jack Daniel’s brand. Jack Daniel’s also argued that use of the contested mark would be detrimental to the reputation and distinctive character of the earlier marks.
Preliminary issue – amendment of specification
In December 2022, Hemphill and Kiernan filed an amendment to limit the specification of the JACK & VICTOR trade mark in classes 33, 35, 39 and 40. The amendments excluded Bourbon, Tennessee Whiskey, Rye Whisky and Whiskey. Jack Daniel’s claimed that the limitation was not acceptable for two reasons:
- A specification should clearly indicate the coverage of a trade mark and that the average consumer will not understand that “whiskey” and “whisky” are different goods, and
- The limitations in class 39 and 40, are unacceptable because it is impossible to understand the distinction between the services covered and those excluded. For example, it is not possible to identify the difference between packaging services for whiskey and packaging services for Scotch whisky.
The UKIPO agreed that a significant proportion of consumers will perceive whiskey and whisky as variant spellings, or misspellings, rather than as indicating distinct products. As such, the exclusion of “whiskey” was found to not indicate with sufficient precision the whiskies which are included in the specification and those which are not.
Evidence before the UKIPO
Evidence was provided on behalf of Hemphill and Kiernan which explained the popularity of the Still Game sitcom, particularly in Scotland. It was argued that the names Jack and Victor had become synonymous with the show. This evidence was unchallenged.
Jack Daniel’s on the other hand provided evidence of the use of the earlier marks in the UK, for example its colloquial use by the relevant public in such formats as “Jack & Coke”.
Ruling
The UKIPO agreed with Hemphill and Kiernan and said that “there will be no misrepresentation. The differences between ‘Jack & Victor’ and ‘Jack Daniel’s’ are too great for the relevant public to believe that the contested goods are those of the opponent, despite the strong reputation of the earlier sign, even for identical goods.” Overall, the UKIPO felt that there was a low degree of visual, aural and conceptual similarity between the marks. The UKIPO held that while the earlier Jack Daniel’s marks does have a high level of distinctiveness, the differences between the marks, particularly the conceptual differences, are sufficient to rule out any confusion. As to any indirect confusion, the UKIPO was of the view that the differences are such that there is no proper basis for concluding that JACK & VICTOR is a plausible brand evolution of the JACK DANIEL’S mark as it would not be usual to drop a distinctive part of one trademark and replace it with another, different, distinctive element.
In addition, the UKIPO indicated that there was no evidence that Hemphill and Kiernan were trying to take advantage of the reputation of the Jack Daniel’s whiskey brand. The likelihood of confusion argument was dismissed on the basis that the show had been televised “to some renown, at least in Scotland”. When considering whether there is an objective unfair advantage, the UKIPO held that while it had been accepted that there will be a link for the earlier JACK mark, it did not consider that Hemphill and Kiernan would derive any advantage from the link. It will be “no more that a momentary bringing to mind of the opponent’s mark. Any brief wondering about a connection will be swiftly dismissed because of the dissimilarities between the marks, which will cause the consumer to conclude that these are two unconnected brands which happen to include the name JACK.”
Jack Daniel’s Properties, Inc was ordered to pay £3,200 in costs to Jack & Victor Limited.
Conclusion
While Jack Daniel’s Properties, Inc. may still appeal the ruling, it serves as an interesting reminder that it is important for international brands to do their research when opposing brands who may also have a reputation at local level. In addition, when drafting specifications covering whisky or whiskey, it is also important to be specific so as to avoid confusion between different types of whiskey based products.
For more information on successfully protecting your organisation’s intellectual property rights, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.
