On 19 January the UK High Court held that Diageo (manufacturer of Smirnoff Vodka) could stop Intercontinental Brands from selling a me-too product, “Vodkat” (a low-cost, Vodka mix drink). The Judge held “vodka” denoted a clearly defined class of goods which had sufficient goodwill and reputation to be protected by a claim in passing-off. Vodka now joins the ranks of Champagne, Scotch whisky and Swiss chocolate in benefiting from what is termed “extended” passing-off. If successful, producers/suppliers of a particular product can prevent rival traders from using the same description for a non-identical product (not coming from the same geographical area, not manufactured in the same way or having different properties).

Vodkat was a mix 22% ABV of fermented alcohol and vodka. Vodka must be 100% distilled alcohol and 37.5% ABV. Vodkat’s producers argued that the name was selected to reflect the vodka ingredient. As the market leaders in vodka sales in the UK, Diageo claimed that Vodkat was passing itself off as vodka and thus causing them lost sales. There was evidence that consumers had purchased it thinking it was vodka and that wholesalers and retailers had categorised it with true vodkas and had displayed it on shelves with pure vodka products. The initial get-up of the product had also mimicked that of pure vodkas. The court held that Vodkat was passing itself off as vodka and that Smirnoff would have suffered lost sales and damage through the erosion of the distinctiveness of the term vodka and the reputation it carried.

The decision will be a welcome one for alcoholic beverage producers and other food brands with a defined classification, who may be able to tackle rival or “me-too” products attempting to “piggy-back” on their reputation and goodwill.

For more detail see our IP newsflash available on our website at http://www.herbertsmith.com/NR/rdonlyres/8A31DEBCF978-4DA5-AAE5AA3FF56A211E/14081/January202010VodkatfailsthevodkachallengeJoelSmith.html.