English Court of Appeal upholds Sazerac TM win in 'Eagle' whisky dispute

The English Court of Appeal has upheld a prior ruling that Liverpool Gin Distillery had indirectly infringed a trademark belonging to Sazerac Company—one of America’s oldest distilleries.

On Thursday, August 5, the Court of Appeal handed down a unanimous decision to uphold an English High Court ruling that Liverpool Gin and its parent company Halewood Group had infringed Sazerac’s “Eagle Rare” trademark with its own “American Eagle” sign.

The High Court judgment in September 2020 ruled that, while there was no likelihood of direct confusion, that there was a likelihood of indirect confusion.

Halewood appealed the indirect confusion ruling and Sazerac contended that Justice Fancourt was wrong to reject its case that Halewood’s sign took unfair advantage of Sazerac’s reputation.

In a decision published on Thursday, 5 August, Justice Arnold ruled that Fancourt’s initial ruling was correct, dismissing Halewood’s appeal.

Commenting on the ruling, John Linneker, co-head of IP at Fieldfisher—the firm representing Sazerac—said: “We are delighted at this excellent result for Sazerac and are very pleased that the Court of Appeal has confirmed the finding of trademark infringement made by the first instance judge.”

Brand extension

Fancourt claimed that there was “some similarity” between the sign and the trademarks, bearing in mind that the marks were “occasionally abbreviated to Eagle”.

Halewood challenged the indirect confusion ruling, claiming that the judge had failed to take into account that the packaging of its “American Eagle” whisky did not contain anything that would indicate it was related to “Eagle Rare”.

It also contended that Fancourt did not consider the unique context of “brand extension” prevalent in the drinks industry, where companies use a wide variety of brands to indicate origin, citing “Jack Daniels” and “Gentleman Jack”.

However, Lord Justice Arnold rejected this, saying: “Prior to American Eagle's launch there was no other bourbon in the relevant market using the name ‘Eagle’ as part of its brand name. It is a distinctive component of the brand name.”

Indirect confusion

Arnold said that Fancourt had applied the correct test of likelihood of confusion in the first instance and found no error of law with his analysis.

Linneker continued: “This was an important case because it provides much needed helpful guidance on the concept of ‘indirect confusion’ where trademark infringement is found on the basis that consumers are confused as to the trade origin of a product,  in contrast to ‘direct confusion’ where a consumer buys one lookalike product thinking it is the original (like for like confusion).

He added: “There aren't many High Court cases that have explored this area of the law in as much detail.”

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