The luxury bourbon whiskey market provides the backdrop for this trade mark dispute (Sazerac Brands v Halewood), in which the Defendants' use of 'American Eagle' was found to infringe the Claimants' mark EAGLE RARE. With a particular focus on premium products in a market, this judgment provides useful insight into the court's determination of key issues such as the average consumer and the nature of the relevant market.
In particular, the decision highlights two important elements of the bourbon market: the circumstances in which it is purchased and market trends. The environment in which a purchase is made will affect the degree of attentiveness and therefore 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-licence purchases may be in noisier environments where the visual appearance of the name is often obscured. Secondly, there is a trend in the bourbon and whisky market to have different expressions of brands under the same core branding (e.g. 'special releases' or 'single cask'), and also to release products with different names that may allude directly/indirectly to a brand, including plays on the brand name. Take, for example, Jack Daniels' Gentleman Jack and Winter Jack, and Famous Grouse's The Snow Grouse and Black Grouse. These factors, combined with the distinctive 'Eagle' component of both marks, increased the likelihood of the average consumer believing the goods originated from the same or economically linked undertakings.
The Claimants, producers and retailers of the well-established, high quality Kentucky straight bourbon whiskey 'Eagle Rare', distilled in the historic Buffalo Trace Distillery, have developed a strong reputation amongst bourbon consumers through word of mouth and press coverage. Eagle Rare is marketed in two expressions of the brand, a 10 year old version (made in limited quantities and available in the UK only 'on allocation') and a 17 year old one (very scarce and much sought after by bourbon aficionados). In addition to a claim for infringement against the Defendants' use of 'American Eagle' for its bourbon, produced from an unknown family distillery in Tennessee, the Claimants challenged the validity of the Defendants' AMERICAN EAGLE UK trade mark. Both parties relied upon expert evidence as the nature of the bourbon market in the UK and the position of brands in that market.
Likelihood of confusion - relevant consumer
On the question of whether there was trade mark infringement on the grounds of a likelihood of confusion, the Defendants accepted that there was a degree of similarity (albeit low) between the American Eagle sign and the EAGLE RARE mark, but denied a likelihood of confusion. The assessment of a likelihood of confusion is made from the perspective of the average consumer, i.e., here the average consumer of bourbon. It had to take into account what idea/image or association the names will conjure up in the average consumer's mind, how they sound when used in relevant contexts (such as shops, bars, restaurants and clubs), and how they appear visually. The attention of the average consumer will vary depending upon the category of goods/services and the circumstances in which the purchase is likely to take place.
The Court considered the rarity, price and quality of the respective bourbons, brand loyalty and the circumstances in which a purchase was likely to take place as factors influencing the degree of knowledge and attentiveness.
Despite being a large mass market drink, the evidence demonstrated strong brand loyalty for particular brands of bourbon, which meant the majority of consumers would stick to their brand of choice unless motivated to try others. Whilst this led to a degree of care and attentiveness when buying particularly premium products (such as Eagle Rare), it was not a feature that was particularly distinctive of the bourbon market. It did however mean that the relevant consumer had a 'somewhat higher' degree of attentiveness than a consumer of certain other spirits. Further, the average requirement removed those consumers at either end of the knowledge and attentiveness range, but also may include those who do not in fact drink bourbon at all, but are purchasing it as a gift.
Likelihood of confusion – indirect confusion
Whilst direct confusion was unlikely – in that a purchaser of bourbon was unlikely to mistake a bottle of American Eagle for the more familiar product of Eagle Rare - the same consumer would, however, likely assume that there was some connection between them, judging by the degree of similarity in names and the relevant market. This was sufficient to constitute a likelihood of confusion, despite there being no evidence of any actual confusion.
Unfair advantage/detriment to distinctive character
If the Court had not found there to be a likelihood of confusion, it would not have found the Defendants to have taken unfair advantage of the Claimants' mark, or to have caused detriment to its distinctive character. Whilst an association in the minds of the relevant consumers with a well-regarded, high quality product like Eagle Rare would likely be advantageous to the Defendants, the Court concluded that the Defendants could not be said to be "getting a free ride", given, for example, the Claimants' low advertising expenditure in achieving Eagle Rare's repute.
A further interesting point is that, in order to establish a pattern of behaviour, the Claimants relied upon the Defendants' prior attempt to register the trade mark VERA LYNN for a gin brand in 2018 (successfully contested by the late Dame Vera on the grounds of passing off rights and bad faith).