No Irish welcome for St Patrick whiskey

 

Cooley Distillery produced St Patrick whiskey which was distributed in Russia by Rotor House. The product was not distributed in Ireland. The marketing material provided that:

Irish Distillers sought an injunction against Cooley Distillery, claiming that the latter had:

Cooley Distillery denied these allegations and claimed that the differences between the labels were such that consumers would not be confused between the products. In particular, the trademarked labels clearly depicted the names Jameson and St Patrick.

 

Considering Section 14(2)(b) of the Trademarks Act 1996 (equivalent to Article 7 of the Community Trademark Regulation (40/94)), the court determined that the overall visual impression given by each label was similar, despite the differences in the product names (which were clearly distinctive in lettering, connotation and phonetics). The court also accepted that:

However, these differences were insufficient to overcome the general visual impression of similarity. The court held that if it were examining the differences between the labels in the context of the bar trade (which would require verbal use of the marks), no passing off would occur. However, in the context of supermarket shelf sales (where customers select the products themselves), confusion could result based on the similarity of colour and other features of the labels.

 

In arriving at its decision, the court took into account the opinion of two practitioners in the Russian marketplace, who were of the belief that the different verbal designations in the names of the products would not reduce the risk of confusion given the substantial similarities between the labels. The court reviewed these opinions in light of the uncontroverted evidence of confusion that did occur where the Jameson product was ordered and billed, but the St Patrick product was served. Further evidence of confusion was shown in the form of a photograph provided by a distributer to Irish Distillers which included the St Patrick product in the Jameson range. On this basis, the court concluded that there was a likelihood of confusion on the part of the public between the two labels and granted the injunction.

 

The decision underlines the risk of a court finding a likelihood of confusion in spite of each product featuring a highly distinctive trademark element, in circumstances where product appearance is similar and the method of consumer choice could lead to confusion.