US court refuses ‘Peaky Blinder’ liquor sales ban

The production company behind the BBC series “Peaky Blinders” has failed to block the sale of liquors using the name while its trademark suit continues.

In an order published Wednesday, May 19, the US District Court for the Central District of California denied Caryn Mandabach Productions’ motion for a preliminary injunction against the Sadler’s Brewhouse. According to the court, the TV producer failed to demonstrate a likelihood of irreparable harm or confusion.

Sadler’s, based in the UK, sells three liquors under the Peaky Blinder name, and used quotations from the show to market them, Caryn Mandabach’s complaint alleged. The liquors are distributed in the US by co-defendants Halewood Wines and Spirits, and the Winebow Group.

The brewer contested the claims, citing its historical connection to the real Peaky Blinders gang as its reason for choosing the name in its defence.

According to this week’s court order, the Sadler’s managing director said she felt that “Peaky Blinder was an appropriate name’ for Sadler’s new dark beer because the Peaky Blinder gang’s ‘well-known dark history’ ‘connected’ with the dark beer and she was interested in naming the beer after the Peaky Blinder gang in light of her family and Sadler’s history with the gang.”

Sadler’s applied for the ‘Peaky Blinder’ mark for classes 32 and 33 (beers and alcoholic beverages) with the US Patent and Trademark Office in May 2017.

Caryn Mandabach had not registered ‘Peaky Blinders’ as a mark, and therefore had to demonstrate the brand’s distinctiveness to prove it is protectable and valid.

The court claimed that: “[The] defendants’ intent in selecting the mark does not support a finding of a likelihood of confusion, whereas the similarity of the marks, types of goods and degree of care of consumers, likelihood of expansion of product lines do ... the plaintiff fails to make a ‘clear showing’ of a likelihood of confusion at this stage.”

The producer had originally sent a warning letter to Sadler’s regarding its purported infringement in April 2018, but waited until November 2020 to file a formal complaint. The court found that “such delay rebuts any presumption of irreparable harm”, meaning it could not issue a preliminary injunction.

Sadler’s was represented by Skadden, Arps, Slate, Meagher & Flom. One of the attorneys, partner Anthony Dreyer, told WIPR that he was "pleased with the decision, and Sadler's will continue to vigorously defend and protect its brand rights”.

WIPR has approached Caryn Mandabach Productions for comment.

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