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

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

The term 'vodka' denotes a clearly defined class of goods with protectible goodwill; ICB's marketing of VODKAT, through its name, get-up, and lack of clear differentiation, amounted to a misrepresentation likely to deceive a substantial number of consumers into believing VODKAT was vodka or a version thereof, causing actual and likely damage to Diageo's goodwill, including loss of sales and erosion of the distinctiveness of 'vodka'.

Parties
Claimant: Diageo North America, Inc; Claimant: Diageo Great Britain Limited; Defendant: Intercontinental Brands (ICB) Limited; Defendant: Intercontinental Brands (Holdings) Limited; Defendant: Intercontinental Beverages (Jersey) Limited
Jurisdiction
England and Wales
Judgment Date
19 January 2010
Procedural Posture
Civil / Judgment After Trial
Outcome
Judgment for the Claimants (Diageo); passing off established.
Legal Topics
Passing Off, Extended Passing Off, Goodwill, Misrepresentation, Alcoholic Beverages Regulation, Trade Descriptions
Intellectual Property Commercial Law Passing Off Extended Passing Off Goodwill Misrepresentation Alcoholic Beverages Regulation Trade Descriptions

Case Brief

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Parties

Diageo North America, Inc

Claimant

Diageo Great Britain Limited

Claimant

Intercontinental Brands (ICB) Limited

Defendant

Intercontinental Brands (Holdings) Limited

Defendant

Intercontinental Beverages (Jersey) Limited

Defendant

Procedural Posture

Civil / Judgment After Trial

Legal Issues

  1. 1 Does the term 'vodka' denote a clearly defined class of goods with protectible goodwill?
  2. 2 Has ICB's marketing of VODKAT amounted to a misrepresentation that it is vodka?
  3. 3 Has Diageo suffered or is likely to suffer damage as a result of the misrepresentation?

Ratio Decidendi

The term 'vodka' denotes a clearly defined class of goods with protectible goodwill; ICB's marketing of VODKAT, through its name, get-up, and lack of clear differentiation, amounted to a misrepresentation likely to deceive a substantial number of consumers into believing VODKAT was vodka or a version thereof, causing actual and likely damage to Diageo's goodwill, including loss of sales and erosion of the distinctiveness of 'vodka'.

Court Disposition

Judgment for the Claimants (Diageo); passing off established.

Orders

  • ICB restrained from marketing VODKAT as described, both in the Old Get-Up and New Get-Up, in a manner likely to misrepresent it as vodka.
  • Further relief and directions to be determined following this judgment.