At the end of July, Intercontinental Brands ("ICB") lost their appeal against the High Court ruling that their "VODKAT" brand was being passed off as genuine vodka. In an important case, which will have an effect on advertisers’ choices for product names, the court held that makers of vodka, such as Diageo, were entitled to protect the ‘vodka’ name under the doctrine of "extended passing off".
Five elements have to be established in order to succeed in a claim for extended passing off:
- That his business consists of, or includes selling in England a class of goods to which the particular trade name applies;
- The class of goods is clearly defined, and that in the minds of the public, or section of the public, the trade name distinguishes that class from other similar goods;
- Due to the established reputation of the goods there is goodwill attached to name;
- The claimant is the owner of the goodwill which is of substantial value;
- The claimant has suffered, or is likely to suffer substantial damage to his goodwill.
This post was written by Jennah Akehurst, trainee solicitor.
In their appeal ICB claimed that only products which have ‘cachet’ should be protected under extended passing off. ICB defined cachet as "a class of goods that is perceived by the relevant public as being superior quality or what one might describe as a premium product". They contended that ‘vodka’ did not possess such a cachet and therefore was not deserving of protection in its own right.
The court of appeal did not agree that cachet is a legal requirement for extended passing off. They reasoned that if a product has become known and recognised for its distinctive qualities it will have a following which has created significant goodwill in the name. This concept of distinctiveness provides a sufficient and comprehensive yardstick for deciding which products qualify for protection.
When thinking up new brand names (particularly in the food and drinks markets), it is important to bear in mind that certain generic descriptions will be protected under the extended passing off doctrine, even if they are not registered trade marks or protected geographical indicators. Following this case it is clear that such protection will not only apply to premium products such as champagne, Swiss chocolate or sherry.
Here are some tips for advertisers and their agencies to avoid getting into trouble when choosing names for new products:
- If the brand name is similar to a product which may be protected, take sufficient care to inform consumers what the distinguishing feature is of that particular product;
- Have a clear and prominent description of the product on the front label;
- Take care over the general get-up to ensure that no confusion can be caused with another product (for example, if a protected product usually comes in a particular shaped packaging);
- Consistently instruct traders to display the product away from other products which consumers may potentially confuse it with (for example, the vodkat should not have been displayed right next to the vodka);
- Take sufficient steps to educate consumers about what the product actually is by way of advertising and promotions.