Diageo North America Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors

Diageo North America Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors

Vodka, as a product, has acquired a distinctive reputation and goodwill in the UK. The use of the name VODKAT by ICB, without clear differentiation, amounts to misrepresentation likely to deceive consumers and cause damage to the goodwill in vodka. Extended passing-off does not require the product to have cachet or be a premium product; distinctiveness and goodwill are sufficient. The qualified injunction granted by the trial judge was appropriate, allowing ICB the theoretical possibility to use VODKAT without deception if extraordinary measures are taken.

Parties
Respondents/claimants: Diageo North America Inc & Anor; Appellants/defendants: Intercontinental Brands (ICB) Limited & Ors
Jurisdiction
England and Wales
Judgment Date
30 July 2010
Procedural Posture
Civil Appeal / Appeal From High Court (chancery Division) to Court of Appeal
Outcome
Appeal dismissed; cross-appeal dismissed
Legal Topics
Passing Off, Extended Passing Off, Goodwill, Misrepresentation, Injunctions
Intellectual Property Commercial Law Passing Off Extended Passing Off Goodwill Misrepresentation Injunctions

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Parties

Diageo North America Inc & Anor

Respondents/claimants

Intercontinental Brands (ICB) Limited & Ors

Appellants/defendants

Procedural Posture

Civil Appeal / Appeal From High Court (chancery Division) to Court of Appeal

Legal Issues

  1. 1 Whether vodka as a product qualifies for protection under extended passing-off
  2. 2 Whether extended passing-off requires the product to have 'cachet' or superior reputation
  3. 3 Whether the use of the name VODKAT amounts to misrepresentation and causes damage to Diageo's goodwill

Ratio Decidendi

Vodka, as a product, has acquired a distinctive reputation and goodwill in the UK. The use of the name VODKAT by ICB, without clear differentiation, amounts to misrepresentation likely to deceive consumers and cause damage to the goodwill in vodka. Extended passing-off does not require the product to have cachet or be a premium product; distinctiveness and goodwill are sufficient. The qualified injunction granted by the trial judge was appropriate, allowing ICB the theoretical possibility to use VODKAT without deception if extraordinary measures are taken.

Court Disposition

Appeal dismissed; cross-appeal dismissed

Orders

  • Qualified injunction restraining ICB from using the name VODKAT unless the product is vodka (minimum 37.5% ABV), or the sole alcoholic component is vodka, or the product is clearly distinguished from vodka and vodka-based products.
  • ICB restrained from representing a mixture of vodka and fermented alcohol as vodka or as a low-strength version of vodka.