Breaking news: Vodkat falls foul of extended passing-off

A swiftly-issued release from Rouse Legal gave the IPKat the news that the sale of a non-vodka product as Vodkat was a form of extended passing-off. So held Mr Justice Arnold this morning in Diageo v Intercontinental Brands [2010] EWHC 17 (Ch). This 45-page extravaganza is the latest in that long line of ‘extended form’ passing off cases which began back in 1960 with the first ‘Champagne’ case, Bollinger v Costa Brava Wine Co Ltd [1960] Ch 262 and which has taken us on a tour through ‘Sherry’, ‘Scotch whisky’ and ‘advocaat’and even ‘Swiss chocolate’. According to the press release,

" ... the defendants’ product, VODKAT, [was] not a vodka, but a 22% alcohol by volume (ABV) mixture of fermented alcohol and vodka. To be a vodka a product has to be inter alia 100% distilled alcohol and at least 37.5% ABV.

According to the defendants the brand name, VODKAT, was selected to indicate that vodka was one of the product’s ingredients. The defendants conceded that the product was targeted at the core vodka market (females aged 18 to 25) and the judge found that it had been marketed under a get-up strongly reminiscent of a vodka get-up.

Diageo, the proprietors of SMIRNOFF, the UK’s leading brand of vodka, objected to VODKAT, claiming that it was being passed off as vodka. Evidence was produced of retailers and wholesalers categorising [Kat-egorising?] the product as a vodka, displaying it among the vodkas and in some cases expressly stating it to be a vodka. Evidence was also produced of journalists and others believing it to be a vodka [judging by what some journalists write, they'll believe anything, particularly after the first few glasses] and this was supported by evidence of consumers who had bought it believing it to be a vodka.

The defendants defended the case primarily on the basis that ‘Vodka’ is not a sufficiently well-defined category of product and does not have the necessary cachet to merit protection by way of a passing off action. They also contended that the claimants’ evidence of deception was not sufficiently substantial in the context of the massive sales achieved by VODKAT over the last five years.

In his judgment, the judge relates in some detail the development of the law in this area and concludes that vodka is sufficiently well-recognised as a product category to merit protection by way of this form of action. He rejected an argument put forward by the defendants that for vodka to merit protection it had to have a reputation for superiority. He found that “vodka was generally perceived by consumers to be a clear, tasteless, distilled high strength spirit” and that “an important aspect of the reputation of vodka [is that] it can alcoholically enhance any chosen mixer without
detracting from the taste of the mixer”. He concluded that “the term ‘vodka’ does have a reputation giving rise to a protectable goodwill”.

As to the evidence of deception, the judge was satisfied “that the instances of actual
confusion proved in evidence are representative of a significantly greater number that will have occurred”. The judge was also satisfied that Diageo will have suffered resultant damage in the form of both lost sales and erosion of the distinctiveness of the term ‘vodka’. In the result the judge concluded that the defendants had passed off VODKAT as vodka. The form of the final order has yet to be determined [It usually starts with the words "Last orders, please ..."].

Aspects of the judgment, which may be of interest to practitioners, are the sections dealing with the judge’s analysis of the basis of the action and his comments in relation to the trap order and survey evidence”.

The IPKat looks forward to reading the details and may return to this case if/when he finds something exciting.

More on vodka here
Vodka cocktails here