Last month the English High Court held that “vodka” is a generic product name which is capable of protection at common law by those who have built up a reputation and related goodwill for producing and selling it. The decision is the most recent in a line of case law which has seen champagne, sherry, advocaat, whisky and Swiss chocolate awarded protection on the same basis.
This latest case was brought by Diageo against rival drinks manufacturer Intercontinental Brands (ICB) and centred on ICB’s use of the name “Vodkat” for its blend of vodka and fermented alcohol (with the latter derived, interestingly, from orange juice). As purveyor of Smirnoff, the UK’s best selling vodka, Diageo sought to object to ICB’s sale of Vodkat under that name, arguing that ICB were “passing off” Vodkat as vodka, thereby diverting sales from Diageo and, more importantly, contributing to a gradual dilution of the distinctiveness of “vodka” as a generic product name.
The High Court upheld Diageo’s claim, finding that “vodka” is a term with which the consumer public clearly associates a distinct class of (high strength) spirit drink and that Diageo had provided sufficient evidence to establish that both those involved in selling Vodkat (in shops and licensed premises) and their consumers were confused or likely to be confused into thinking that Vodkat was vodka. As well as its name, the High Court founded in particular for these purposes on the red and white “vodka like” labelling on the product and the fact that wholesalers and retailers generally tended to display Vodkat alongside vodkas, sometimes even with shelf/price labelling which referred to it as vodka. The Court was critical of ICB’s failure to direct its resellers as to how to shelve and sell Vodkat so as to avoid (or minimise the risk of) such confusion.
Of course how a producer describes its product to the marketplace is also regulated by consumer protection and sector specific legislation, such as food law. Vodka, for example, must have a strength of at least 37.5% ABV under European law and Vodkat falls well short of that, at 22% ABV. However, in most cases, those laws can’t be directly enforced by other traders detrimentally affected by a breach of their requirements.
In that respect, the application of the law of passing off in the Diageo case and its predecessors therefore seems a sensible means of allowing individual traders to take private action against competitors who are effectively misrepresenting the nature of their product to prospective purchasers. However, by definition, this use of passing off seems to be best suited to food and drink, where the consumer can’t be sure of what he or she is getting until the point of consumption – i.e. post purchase. It will be interesting to see whether it is used in future to try to protect the distinctiveness of products of a different nature, where it may be more difficult to establish the necessary likelihood of confusion.
On February 1, 2010