Diageo battles Sazerac in whiskey TM claim

Drinks maker Diageo has taken up arms against rival Sazerac in a dispute centring on whiskey.

Filed on Friday, December 16, at the US District Court for the Southern District of New York, the suit claimed that Sazerac has committed wilful acts of trademark infringement, unfair competition, trade dress infringement and dilution.

Diageo said Sazerac had diluted a trademark by redesigning the bottle and label for a line of its alcohol beverage products, including whiskey, “in order to knock-off the appearance and unfairly trade on the reputation of Diageo’s extremely popular Bulleit brand bourbon and rye whiskey”.

In 2001, Diageo acquired Bulleit whiskey, and all of the trademark and trade dress rights and related goodwill associated with the business.

According to the suit, since 1999, the whiskey has been sold in a “distinctive canteen-shaped bottle with embossed lettering and a rectangular label that is intended to evoke the rugged look and feel of the American Frontier”.

Diageo owns the 3D configuration of the bottle, US registration number 3,075,812.

According to the suit, Sazerac’s Dr. McGillicuddy’s product line has infringed Diageo’s trademark.

“Defendants recently revised the bottle and label design for Dr. McGillicuddy’s liqueurs to closely mimic the overall appearance of Diageo’s Bulleit design mark and trade dress,” said the suit.

It added that within the past year, Sazerac has expanded its efforts to “trade on Diageo’s reputation by introducing four different kinds of whiskey” to the product line.

“The timing of defendants’ marketing and sale of the accused products is no coincidence,” said the suit, claiming that Sazerac was “well aware of the commercial success” of Bulleit whiskey.

“Indeed, this is not the first time defendants have copied the packaging of Diageo’s most successful products in an effort to trade on its goodwill and reputation,” the suit added.

It continued: “As Diageo has done in the past, Diageo sought to get defendants to voluntarily cease their infringing activity, but defendants refused to alter the label and bottle for the accused products.”

Diageo is seeking a jury trial, injunctive relief, destruction of infringing materials such as labels, a payment of all profits, damages, triple damages for wilful infringement, and costs.