The background

Greg Hemphill and Ford Kiernan are directors of Jack & Victor Ltd (the applicant) and are also the lead actors in Still Game. In 2021 the pair launched a whisky brand, JACK & VICTOR, named after their characters in the show. In March 2021 the applicant filed a UK trade mark application for the mark JACK & VICTOR in respect of a number of alcoholic beverages, including Scotch whisky, as well as associated drinking vessels and distillation, retail, packaging and delivery services in respect of the relevant goods.

The opposition

The application was opposed by Jack Daniel’s, which pleaded a likelihood of confusion, reputation and passing off. As regards a likelihood of confusion, Jack Daniel’s relied on a number of earlier marks but later accepted that its best case under this ground rested in its JACK, JACK DANIEL’S and JACK ROCKS marks. Reputation was pleaded in respect of the JACK, JACK DANIEL’S and GENTLEMAN JACK marks, and passing off was pleaded in relation to the JACK and JACK DANIEL’S marks.

Preliminary issue: specification amendment

In December 2022, the applicant limited the specification of its application in classes 33, 35, 39 and 40 to exclude bourbon, Tennessee whiskey, rye whisky and whiskey, although a preliminary finding held that the limitation was unacceptable for various reasons and it was therefore disregarded for the purposes of the opposition.

The decision

Despite varying degrees of similarity being found between the marks as regards a likelihood of confusion, and even identity/similarity as regards some of the goods/services, it was held that the marks were just not similar enough to create a likelihood of confusion or association.

Turning to reputation, although it was held that JACK DANIEL’S, JACK and GENTLEMAN JACK all had a reputation at least in respect of whisky, it was held that the average consumer would not make a link between the application and either of the JACK DANIEL’S or GENTLEMAN JACK marks. Although the required link was found between the marks JACK and JACK & VICTOR, it was held that the evidence did not show any subjective intention on the part of the applicant to take unfair advantage of Jack Daniel’s earlier mark. Jack Daniel’s claim of detriment to reputation also failed on the basis that it was entirely speculative. As regards distinctive character, Jack Daniel’s claimed there was no evidence in the proceedings that “the element JACK” is used by other parties in the context of alcoholic beverages/related goods, however, this was slightly undermined by its own survey evidence which included reference to both “Frosty Jack’s” and “Scrumpy Jack”: this ground therefore also failed.

Finally, as regards passing off, Jack Daniel’s was found to have acquired relevant goodwill in relation to the marks JACK DANIEL’S and JACK. However, it was held that there would be no misrepresentation to support a claim of passing off; in the case of JACK DANIEL’S, the differences between the marks were just too great. In relation to JACK, which had a lesser reputation/goodwill, the public was unlikely to be mistaken into believing that the contested mark was a development of Jack Daniel’s brands.

Jack Daniel’s was therefore unsuccessful on all grounds pleaded.

Comment

It appears that Jack Daniel’s may be appealing the decision. It is up for debate whether a registration for, for example, “JACK & Coke” as is often used when ordering, for example, a “Jack and Coke”, would have resulted in a different outcome (albeit Jack Daniel’s would largely be relying on consumers to use the mark on its behalf). In any event, this decision serves as a timely reminder that being the owner of a well-known brand does not necessarily guarantee success in a trade mark dispute.

In short

This case is a reminder that being the owner of a well-known brand does not necessarily guarantee success in a trade mark dispute. It also prompts a debate about creative trade mark applications, assuming there is the requisite intent to use (at least in the UK), which can be powerful tools in a brand owner’s enforcement arsenal. Survey evidence remains a challenge in UK proceedings, particularly if it reveals aspects that are damaging or contradictory to the surveying party’s case.