The Court of Appeal of England and Wales has recently upheld the first instance decision given by the High Court where he stated: “The UK and EU trademarks for the words ‘Eagle Rare’ are infringed by the sign ‘American Eagle’ which both relate to Bourbon Whiskey products” and thus, the Court of Appeal dismissed an appeal.
Lord Justice Arnold stated while dismissing the appeal: “The High Court was correct in finding that there was trademark infringement based on the basis of a likelihood of indirect confusion. However, this decision will always act as a good reminder of the approach the court takes to key issues with respect to the likelihood of confusion required for trademark infringement (particularly in relation to the distinction between direct and indirect confusion).”
The luxury bourbon whiskey market was facing the backdrop caused due to this trademark dispute. In this case, the usage by Defendants of ‘AMERICAN EAGLE’ was alleged to be infringing the Claimants' mark ‘EAGLE RARE’ and claimants further argued that defendants want to ride upon the coat-tail of the goodwill created by them. In particular, the decision of the High Court highlighted two important elements of the Bourbon market:
Firstly, the circumstances in which it is purchased: Interestingly, the court also kept a close eye on the role of the environment in which a purchase is generally made affecting the degree of attentiveness and therefore, also the likelihood of confusion between marks. In the bourbon market, purchase in a retail store is likely to be under some time pressure or other constraints, whilst on-license purchases may be in noisier environments where the visual appearance of the name is often obscured.
Secondly, the market trends: Court dived deep into the market trends and concluded that there is a trend in the bourbon and whisky market of having different expressions of brands under the umbrella of the same core branding (e.g., ‘special releases’ or ‘single cask’), and also to release products with different names alluding directly/indirectly to a brand which further including plays on the brand name (e.g., Jack Daniels' Gentleman Jack and Winter Jack & another one as hand Famous Grouse's The Snow Grouse and Black Grouse).
Taking into consideration all the above factors with the distinctive ‘Eagle’ component of both marks court came to the conclusion that the Defendants’ mark is capable of increasing the likelihood of the average consumer in believing that the goods originated from the same or economically linked undertakings. Undoubtedly, the High Court did a spectacular job while deciding this case as they delve into the minute details.
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