Diageo North America Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors [2010] EWCA Civ 920 (30 July 2010)

Diageo North America Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors [2010] EWCA Civ 920 (30 July 2010)

There is no legal requirement that a product must possess 'cachet' or be perceived as premium for extended passing-off to apply. The law protects the goodwill in a product name if it denotes a clearly defined class of goods with a distinctive reputation. Vodka qualifies as such a product. ICB's use of 'VODKAT' amounted to misrepresentation likely to deceive consumers and erode the distinctiveness of 'vodka', causing damage to Diageo's goodwill. The appeal is dismissed.

Citation
[2010] EWCA Civ 920
Parties
Respondents/claimants: Diageo North America Inc & Anor; Appellant/defendants: Intercontinental Brands (ICB) Limited & Ors
Jurisdiction
England and Wales
Judgment Date
30 July 2010
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Appeal From High Court, Chancery Division, Intellectual Property
Outcome
Appeal dismissed
Legal Topics
Passing Off, Extended Passing Off, Goodwill, Misrepresentation, Alcoholic Beverages Labelling, Product Description, Trade Marks
Intellectual Property Commercial Law Passing Off Extended Passing Off Goodwill Misrepresentation Alcoholic Beverages Labelling Product Description +1 more

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Parties

Diageo North America Inc & Anor

Respondents/claimants

Intercontinental Brands (ICB) Limited & Ors

Appellant/defendants

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Appeal From High Court, Chancery Division, Intellectual Property

Legal Issues

  1. 1 Whether extended passing-off requires the product to have 'cachet' or superior quality in the public mind
  2. 2 Whether vodka as a product qualifies for protection under extended passing-off
  3. 3 Whether ICB's use of 'VODKAT' constitutes misrepresentation and causes damage to Diageo's goodwill

Ratio Decidendi

There is no legal requirement that a product must possess 'cachet' or be perceived as premium for extended passing-off to apply. The law protects the goodwill in a product name if it denotes a clearly defined class of goods with a distinctive reputation. Vodka qualifies as such a product. ICB's use of 'VODKAT' amounted to misrepresentation likely to deceive consumers and erode the distinctiveness of 'vodka', causing damage to Diageo's goodwill. The appeal is dismissed.

Court Disposition

Appeal dismissed

Orders

  • Injunction restraining ICB from advertising, offering for sale, selling, or supplying any alcoholic beverage under the name VODKAT unless it meets specified criteria relating to vodka content and ABV.
  • Costs to be paid by the appellants.