Still (in the) Game- how to keep your IP protected

From 2002 to 2019, Ford Kiernan and Greg Hemphill starred as Jack and Victor in BBC Scotland's well-known comedy Still Game, after the characters gained popularity in their earlier sketch show Chewin' the Fat. In 2021 the actors diversified into the whisky industry and introduced a brand new Scotch whisky to the drinks market. However, when Kiernan and Hemphill attempted to register the name of their new whisky, 'Jack and Victor' (after their Still Game characters), as a trade mark they faced opposition from worldwide whisky brand Jack Daniel's.

Jack & Victor v Jack Daniel's

Jack Daniels' legal team opposed Kiernan and Hemphill's trade mark application, arguing that "the relevant public [would] believe that the contested mark is used by the opponent or by a party economically connected with or endorsed by the opponent…. It further claims that the use of the contested mark would constitute free-riding by the applicant on the reputation of the opponent." In summary, Jack Daniel's argument was that a section of the public would be confused by the mark so as to erroneously believe that Jack and Victor whisky was somehow associated with or endorsed by Jack Daniel's, such that it would unfairly take advantage of Jack Daniel's existing reputation. Jack Daniel's currently hold several trade marks in the UK: including one of which pertains to the brand name itself, 'Jack Daniel's', and another regarding the name of one of their whisky offerings 'Gentleman Jack'.

Ultimately, the UK Intellectual Property Office ("UK IPO") who determine trade mark applications ruled that, given the widespread popularity of Still Game in Scotland (with one 2018 episode being the most watched TV programme in Scotland that year), the name 'Jack and Victor' would not be confused with Jack Daniel's existing trade marks. Therefore, the consensus was that the names 'Jack and Victor' would be so well known and associated with Still Game in Scotland that consumers would not be led to mistakenly believe they were connected with the Jack Daniel's brand. Therefore, the 'Jack and Victor' trade mark was permitted to be registered.

How to protect your brand's IP rights

While Jack Daniel's were unsuccessful on this occasion, the action they took in opposing the 'Jack and Victor' trade mark demonstrates a proactive attitude towards enforcing and protecting their brand's IP rights.

What can I do if I think my registered trademark is being infringed?

In the UK, trade marks which are formally registered are afforded protection from infringement under the Trade Marks Act 1994. The 1994 Act prevents third parties from using a trade mark holder's mark without their consent. This ensures that third parties cannot take unfair advantage of the goodwill and reputation that an existing trade mark holder has built up in association with their brand.

If you consider that your trade mark is being infringed, interdict can be obtained in the Scottish courts to prevent a competitor or any third party from performing, or continuing to perform, an activity which infringes your trade mark. Interim interdict can also be sought which, if granted, prevents the opposing party from engaging in any infringing activity until the dispute is resolved (either by way of a court order or extra-judicial settlement). Compensation can also be sought, by way of damages, if your business suffers financial loss as a result of the infringement.

What can I do if another party seeks to register a trade mark similar to mine?

In instances whereby a third party attempts to register a new trade mark which an individual or company believes is similar to their own existing registered trade mark, it is open to the existing trade mark holder to challenge the opposing party's application for registration (as Jack Daniel's did). Once a trade mark application has successfully passed the examination process of the UK IPO, it is published in the Trade Marks Journal and can be challenged for a period of two months (with the possibility to extend by a further month if an opposing party files a 'Notice of Threatened Opposition').

An application can be opposed by anyone on 'absolute grounds' that it does not meet legal requirements (for example, that it is descriptive and/or non-distinctive) or by a party who already owns a trade mark on 'relative grounds' such as that the mark is confusingly similar to their existing trademark. If the opposition is successful, the trade mark will not be granted.

Be ahead of the game

In order to maximise protection of your business' IP rights, it is important that you establish a robust brand protection strategy that protects all your IP rights, making sure that it is regularly reviewed and kept up to date. Equally, businesses should remain alert as to the branding being used by competitors and act swiftly to challenge infringing signs that may be harmful to the reputation or goodwill associated with their existing brand.

If you would like to speak to one of our experts about trade mark applications, infringement, or IP protection in general, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.