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24 February 2009
The High Court decision in Irish Distillers Ltd v Cooley Distillery plc illustrates that even where a lookalike product is clearly branded with a name that is quite different from the brand that it is copying, this may not be enough to defend against an application for a temporary injunction where the overall visual impression is very similar.
Irish Distillers, which produces Jameson, was granted an injunction preventing Cooley Distillery from using labels on its St Patrick brand which were so similar to Jameson labels as to lead customers to believe that St Patrick whiskey was actually part of the Jameson family of products.
St Patrick was distributed in Russia by Rotor House, but never distributed in Ireland. The marketing material instructed that the St Patrick product be placed on the shelves next to Jameson, but with a retail price that was 18% lower. Irish Distillers claimed that Cooley Distillery had infringed its trademarks and the copyright it owned in the label of Jameson whiskey, and had passed off its goods as those of Irish Distillers. Cooley, on the other hand, claimed that the differences between the product labels were such that no one could be confused between the two. In particular, one trademarked label clearly depicted JAMESON and the other ST PATRICK.
The court determined that the overall visual impression given by each label was similar despite the difference in product name, which was clearly distinctive in lettering, connotation and phonetics. It accepted that there were differences in the representations of the emblem and the coat of arms on each label, and that there was no similarity between the names St Patrick and Jameson and therefore no confusion between the verbal elements of the names.
However, these differences were not sufficient to overcome the general visual impression of similarity. The court held that if it were examining the differences in the context of the bar trade (which would require verbal use of the brand name or mark), then no passing off would have been deemed to have occurred. However, in the context of retail sales, where a customer was selecting the product from the supermarket shelf, confusion could arise from the similarity in colour and other features of the label.
The court took into account the opinion of two practitioners in the Russian marketplace who believed that the different verbal designations in the names of the products would not reduce the risk of confusion, given the other substantial similarities between the labels. There was also uncontroverted evidence of confusion occurring where Jameson was ordered and billed, but St Patrick was served. Further evidence of confusion was shown in the form of a photo provided by a distributer to Irish Distillers, which included the St Patrick product in the Jameson range.
The court concluded, on balance, that there was a likelihood of confusion on the part of the public between the two labels and granted the injunction.
This decision highlights the risk of a court restraining the sale of a lookalike product even where the lookalike features a highly distinctive trademark element or brand name of its own, where the product appearance is similar and the method of consumer choice could lead to confusion.
From a brand owner's perspective, this decision may in future make it easier to bring successful temporary injunction applications in respect of lookalike products. For those designing lookalike products which will be sold on supermarket shelves, care must be taken that a distinctive brand name is not the only feature which distinguishes the product from those with which it competes.
For further information on this topic please contact Valerie Shaw at Matheson Ormsby Prentice by telephone (+353 1 232 2000) or by fax (+353 1 232 3333) or by email (firstname.lastname@example.org).
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