Triple victory for SMIRNOFF in invalidity cases

The High Court has issued three unreported decisions in favour of US drinks company Diageo, which (i) reject a bad-faith challenge against Diageo's SMIRNOFF registrations for vodka, and (ii) establish that a third party may not register a well-known mark in a different script, even for different goods.

Russian company Zakritoe Aktsionernoe Obchtechestvo Torgovy Dom Potomkov Postavechtchika Dvora Ego Imperatorsk Velitschestve PA Smirnova (ZAO) owns two trademark registrations in Cyrillic script, one of which transliterates as 'Smirnoff' and the other, which is made up of ZAO's full company name (meaning 'Trading Company and the Supplier to the Court of his Imperial Majesty, PA Smirnoff at the Cast Iron Bridge in Moscow'). ZAO applied for invalidation or revocation of 14 of Diageo's marks containing the name 'Smirnoff' in Latin alphabet. ZAO claimed that Diageo (i) registered its marks in bad faith by falsely claiming to be the successor of the PA Smirnoff distillery founded in Russia in the late 19th century, and (ii) used the marks deceptively by misrepresenting to the public that the vodka is produced in Russia or is connected with a Russian commercial organization. This, claimed ZAO, contravened the Trade Descriptions Act 1968 and the Spirit Drinks Regulation. Diageo counterclaimed that ZAO's Cyrillic script marks should not have been registered because of Diageo's prior registrations.

The Trademark Registry rejected ZAO's invalidation applications on the grounds that the marks were not deceptive. In another decision, the hearing officer ruled that, although SMIRNOFF in Cyrillic script would be confusingly similar to Diageo's mark if used in connection with alcoholic beverages, it could be used for other goods and services. Both ZAO and Diageo appealed to the High Court.

The court upheld the Trademark Registry's decision to reject ZAO's claims. Justice Jacob found that (i) SMIRNOFF is well known, accepting Diageo's evidence that it is the world's leading brand of vodka and has been sold in the United Kingdom since 1952, and (ii) there was no evidence to suggest that anyone had ever been deceived into thinking that the vodka is made in Russia. Accordingly, Jacob dismissed ZAO's appeal, concluding that its claims were "hopeless" and that the brand belongs solely to Diageo.

Jacob upheld Diageo's appeal and ordered the cancellation of ZAO's Cyrillic script marks. He agreed with Diageo that even if the Cyrillic SMIRNOFF mark was applied to goods other than alcoholic drinks, consumers would still make an association with vodka - Diageo's SMIRNOFF vodka in particular. Jacob commented that the script used for the mark did not make any difference since, under the 'average consumer' test, the court must take into account the fact that some people in the United Kingdom can read Cyrillic script. It was likely that these people would be deceived or confused by ZAO's mark.

Similarly, Jacob found that the mark comprising a description (in Cyrillic script) of the company and its status as "supplier to the Court of His Imperial Majesty" for use on labels for vodka bottles should not have been registered as it was unlikely that anyone would ever use this as a trademark. The only element that had trademark significance within the wording was "PA Smirnoff". Given the overwhelming reputation of Diageo' SMIRNOFF vodka, ZAO's mark would be deceptive. Again, Jacob found that the fact that the mark was in Cyrillic script was irrelevant.

Rachel Aaron, Hammonds, London