AU VODKA LIMITED v NE10 VODKA LIMITED & Anor

In an application for an interim injunction in a passing-off claim, the court must assess the risk of injustice at the date when the injunction would actually be granted. Damages, the balance of convenience and any serious issue to be tried must be evaluated on the evidence then available.

In get-up cases, the decisive question is the likelihood of operative deception. Copying, conceptual similarity and mere consumer confusion do not suffice. Public-policy concerns about competition do not create a special exception where the classical passing-off requirements are otherwise established. The status quo is fact sensitive and may be affected by the parties’ conduct before the application.

Au Vodka Limited sought an interim injunction restraining NE10 Vodka Limited and Leon Hogan from marketing and selling NE10 vodka on the basis that its bottle get-up was deceptively similar to Au Vodka’s get-up.

The claimant relied on its reputation in a gold metallised bottle bearing the Au 79 VODKA branding and lower flavour plate. The defendants’ bottles had a similar shape and dimensions but bore the NE10 VODKA branding, used different colours and included an illumination feature.

The court also considered informal applications concerning Mr Hogan’s liability and directed an expedited trial. The central issues were whether there was a serious issue to be tried, whether damages were adequate, where the balance of the risk of injustice lay, and whether the allegations against Mr Hogan were legally sustainable.

1. Interim relief refused. There was plainly a serious issue to be tried on passing off, but the evidence did not establish that damages would be inadequate for the claimant if relief were refused. Any deception before trial was likely to be limited and could substantially be addressed by final injunctive relief and damages.
2. The court assessed the defendants’ position at the hearing date, not at the date of the initial complaint. The defendants had launched the products, supplied them to numerous premises and built commercial momentum. An injunction would risk loss of contracts, customers, employees, investment and an opportunity to relaunch, much of which would be difficult to quantify.
3. The balance of convenience was better understood as the balance of the risk of injustice. It favoured the defendants because their products were already on the market. The status quo argument did not alter that conclusion. The approach in Frank Industries v Nike [2018] EWCA Civ 497 was highly fact sensitive and did not apply on these facts.
4. For passing off, the claimant had to establish goodwill or reputation, operative misrepresentation and damage or likely damage. Mere confusion, or consumers wondering whether there was a connection, was insufficient. The similar bottle shape and alleged copying did not establish deception, particularly where the products were called for as Au vodka and NE10 vodka and differed in colour and branding.
5. There was no separate public-policy exception for get-up cases. The relevant question remained whether the classical requirements of passing off were satisfied. Generally, consumers do not infer trade origin from the shape of goods alone without graphic or word elements, although evidence could establish the contrary on particular facts.
6. The allegations that Mr Hogan was personally liable for preparatory acts or merely because he attended an earlier meeting were unsustainable and were struck out. His alleged joint and several liability with the first defendant was legally arguable, though it required further particulars. A two-day expedited trial was directed for the earliest available date in January 2023.