Sazerac toasts a TM victory at the English High Court
In a victory for the US whiskey brand, Sazerac, the English High Court has ruled that its trademark was infringed, in a decision handed down on September 10 2020.
In June 2018, Liverpool Gin Distillery, part of the Halewood Group, filed an application to register a trademark for the word mark ‘AMERICAN EAGLE’ for its bourbon whiskey brands.
US whiskey brand Sazerac opposed the registration, claiming that the sign was too similar to its earlier ‘EAGLE RARE’ trademark used in relation to identical goods, namely bourbon whiskey. It also claimed that there was consequently a likelihood of consumer confusion in the UK and EU.
In hearings held in July, Sazerac said the use of ‘AMERICAN EAGLE’ took unfair advantage of the distinctive character or repute of ‘EAGLE RARE’ and was “detrimental to its distinctive character”.
Halewood responded by accusing Sazerac of unfairly taking advantage of the ‘EAGLE RARE’ heritage and reputation in the way that it named and positioned its brand. It also sought a revocation of Sazerac’s UK and EU trademarks regarding whisky and alcoholic beverages on the grounds of non-use for a period in excess of five years.
While Halewood accepted that there was a degree of similarity between the ‘American Eagle’ sign and the ‘Eagle Rare’ trademark, it suggested that the degree of similarity was low. During the proceedings, the court heard evidence from Robert Allanson, a journalist and freelance consultant, and editor of Whisky Magazine, along with Tristan Stephenson, a freelance alcohol brands consultant to provide insight into the nature of the market.
After hearing evidence, the court considered that there was a “likelihood of a significant proportion of the bourbon markets in the UK and EU being confused about whether ‘Eagle Rare’ and ‘American Eagle’ are connected brands because it was common for connected brands to have similar names”.
It also concluded that there was also visual similarity between the two marks, given that the substantive ‘Eagle’ appears in both marks as a strong component. It added that “given the distinctive character of the ‘Eagle Rare’ trademark”, it was clear to “that the average consumer who sees or hears the sign ‘American Eagle’ would be likely to call ‘Eagle Rare’ to their mind”.
The court also rejected Halewood’s case that the average consumer of bourbon in the UK or in the EU would have a “high degree of attention” to what they were buying. It added that conversely, that it would be “rather surprising” if consumers did, because according to the evidence provided by the experts, “bourbon is a large mass market; it is not just a connoisseur's drink”.
The court held the registration of the disputed trademark by the Halewood group was invalid.
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