Diageo North America, Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors [2010] EWHC 17 (Ch) (19 January 2010)

Diageo North America, Inc & Anor v Intercontinental Brands (ICB) Ltd & Ors [2010] EWHC 17 (Ch) (19 January 2010)

The term 'vodka' denotes a clearly defined class of goods with a reputation and goodwill in the UK. The defendants' use of 'VODKAT' for a product that is not vodka constitutes a misrepresentation likely to deceive a substantial number of consumers, resulting in damage to the goodwill in 'vodka' by eroding its distinctiveness. Extended passing off is established even though 'vodka' is a descriptive term and not limited to products with a cachet of superior quality.

Citation
[2010] EWHC 17 (Ch)
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
Passing Off (extended) / High Court Trial, Judgment
Outcome
Claim allowed
Legal Topics
Passing Off, Extended Passing Off, Goodwill, Misrepresentation, Damage to Goodwill, Descriptive Terms, Alcoholic Beverages, Vodka, Product Labelling
Intellectual Property Commercial Law Passing Off Extended Passing Off Goodwill Misrepresentation Damage to Goodwill Descriptive Terms +3 more

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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

Passing Off (extended) / High Court Trial, Judgment

Legal Issues

  1. 1 Whether 'vodka' denotes a clearly defined class of goods with protectable goodwill
  2. 2 Whether the defendants' use of 'VODKAT' constitutes misrepresentation and extended passing off
  3. 3 Whether damage to the goodwill in 'vodka' has occurred or is likely

Ratio Decidendi

The term 'vodka' denotes a clearly defined class of goods with a reputation and goodwill in the UK. The defendants' use of 'VODKAT' for a product that is not vodka constitutes a misrepresentation likely to deceive a substantial number of consumers, resulting in damage to the goodwill in 'vodka' by eroding its distinctiveness. Extended passing off is established even though 'vodka' is a descriptive term and not limited to products with a cachet of superior quality.

Court Disposition

Claim allowed

Orders

  • Injunction restraining the defendants from marketing VODKAT as vodka or in a manner likely to mislead as to its nature
  • Defendants to pay damages or account of profits to the claimants