Diageo, the owners of SMIRNOFF vodka have been awarded an injunction in a landmark legal case against Intercontinental Brands blocking the rival drinks company from selling its VODKAT branded alcoholic drink.

Diageo had launched the legal battle two years ago claiming that Intercontinental was passing off its VODKAT drink as vodka. They argued that retailers and wholesalers were being misled into believing that VODKAT was vodka and submitted a substantial amount of evidence to the court to demonstrate this.

Intercontinental conceded that they had targeted their VODKAT drink, which has a 22% alcohol volume and consists of a mixture of fermented alcohol and vodka, at the core vodka market but argued that vodka itself was not sufficiently well-defined enough to warrant protection by way of a passing off action.

In his judgment Mr Justice Arnold disagreed stating that vodka does have a reputation giving rise to a protectable goodwill and added that the instances of actual confusion proved in evidence by Diageo were representative of a significantly greater number that will have occurred. He concluded that Diageo would have as a consequence of such confusion suffered resultant damage in the form of both lost sales and erosion of the distinctiveness of the term vodka.

A representative for Intercontinental has stated that they will analyse the extent of the injunction thoroughly and determine the changes they need to make in order to continue selling their VODKAT drink.

BRIFFA Comment

Trade marks are not registerable for goods/services they describe and so the word vodka is not registerable as a trade mark for vodka nor can any party claim exclusive unregistered trade mark rights in the term vodka for the same reason.

In turn Diageo which can sell up to 20 million litres of its SMIRNOFF vodka to the UK in a year relied on its substantial goodwill in the term vodka in bringing its passing off action against Intercontinental. It argued that the general public recognises vodka to mean a specific alcoholic drink and that such reputation to which their goodwill is attached warrants protection.

The principle they based their argument on is an extended form of passing off (in that it is not based on protection of unregistered trade marks) commonly referred to as the “Champagne Principle” and has been held to protect the names champagne, scotch whisky, sherry and advocaat. 

Agreeing with Diageo’s arguments Mr Justice Arnold held that the word vodka does have a reputation giving rise to protectable goodwill and that Diageo’s goodwill in the word vodka was being damaged by Intercontinental misleading consumers into believing that their VODKAT drink was vodka.

For more information on unregistered trade mark rights, passing off and trade mark registration and enforcement please do not hesitate to get into contact with one of our specialist IP lawyers via info@briffa.com.

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