Sazerac Brands, LLC & Ors v Liverpool Gin Distillery Ltd & Ors

For trade mark confusion, the court must assess the overall impression of the marks globally through the eyes of the average consumer, considering the circumstances of purchase and the possibility of direct or indirect confusion. Mere association is insufficient, but a likelihood that consumers will believe that similarly named products are economically connected may establish infringement. For reputation-based protection, reputation is assessed by reference to the market actually served by the mark and requires knowledge among a commercially significant part of the relevant public. Unfair advantage requires both an advantage and an objectively unfair element; recklessness alone does not supply that element. Dilution requires a serious likelihood of economic harm, supported by evidence or logical deduction rather than speculation.

The claim concerned alleged infringement of the claimants’ UK and EU word marks EAGLE RARE by the defendants’ AMERICAN EAGLE bourbon brand. The claimants relied on likelihood of confusion and on unfair advantage and detriment to distinctive character. The defendants counterclaimed for revocation for non-use and disputed the relevant average consumer, the reputation of EAGLE RARE, and the alleged harm. The court also considered the liability of the group companies and the abandoned passing-off claim.

1. Likelihood of confusion. The average consumer was the legally constructed range of ordinary bourbon purchasers, excluding both unusually knowledgeable and unusually careless consumers. Bourbon purchasers showed meaningful brand loyalty and some increased care, but the market was not confined to connoisseurs. The assessment had to be global and consider visual, aural and conceptual similarity, the goods, the purchasing context and fair notional use.
2. EAGLE RARE and AMERICAN EAGLE were sufficiently similar. Although AMERICAN EAGLE had a distinct composite and conceptual meaning, EAGLE was a distinctive component and no other bourbon in the relevant markets generally used it in a brand name. Consumers would therefore associate the marks and, given the established practice of connected brands using similar names, a significant proportion would believe that the products were economically linked. The claim under article 9(2)(b) of the Regulation (EU) 2017/1001 succeeded.
3. Reputation. Reputation depended on the public concerned by the actual goods marketed, here the bourbon market, rather than the whole whisky market covered by one registration. EAGLE RARE was sufficiently known among a commercially significant part of the UK and EU bourbon market despite limited sales and distribution.
4. Article 9(2)(c). The court assumed no confusion for the alternative analysis. AMERICAN EAGLE took advantage of the repute of EAGLE RARE, but the benefit was not objectively unfair. Recklessness in failing to consider the claimants’ rights did not enlarge those rights or replace the required additional element of unfairness. There was also no sufficient basis for finding dilution absent confusion.
5. The defendants’ UK registration was declared invalid. The first and second defendants were jointly and severally liable; the third defendant was not. The counterclaim was compromised to permit revocation except for whisky and bourbon whiskey, and the passing-off claim was abandoned.