Diageo’s Johnnie Walker hit by trademark ruling
Drinks maker Diageo could be ordered to pull its Johnnie Walker Explorers’ Club range of whisky off the shelves after a US judge ruled against it in a trademark infringement claim brought by a group with the same name.
Issuing a permanent injunction against the collection, judge Charles Ramos said it had “unfairly profited” from an association with a real-life New-York based organisation called The Explorers Club.
Ramos said Diageo had profited to the tune of $50 million in sales from the “purported unlawful” use of the name.
A final order, which will include the scope of the injunction, has yet to be issued.
The Johnnie Walker Explorers’ Club range is a series of blended whiskies launched in December 2012 and is currently sold only in duty-free shops.
The dispute started in March this year when The Explorers Club, founded in 1904, filed a civil lawsuit against Diageo claiming the name was confusingly similar.
It also alleged the whisky’s label, as well as the layout of airport kiosks where it was sold, were modelled on the décor of the real-life Explorers Club.
In a judgment issued on August 4 at the Supreme Court of the State of New York, judge Ramos agreed.
“It is clear that Diageo’s adoption of the name of the Explorers’ Club was for the purpose of leading the public to believe that it was connected or affiliated with the club,” he wrote.
He added that Diageo had “indisputably profited enormously from the purported unlawful and disputed use of the club’s name, to the tune of approximately $50 million in sales”.
The New-York based club, which once had astronauts Neil Armstrong and Buzz Aldrin as members, originally said it would oppose the name unless Diageo agreed to pay a license fee.
But negotiations broke down and Diageo launched the collection without a resolution.
The Explorers Club is also pursuing a Federal case against Diageo seeking monetary damages, according to the New York Post.
A spokeswoman for Diageo, which also owns brands including Guinness and Baileys, said it was extremely disappointed but planned to seek permission to stay the injunction while it immediately appealed against the ruling.
