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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Sazerac Brands, LLC & Ors v Liverpool Gin Distillery Ltd & Ors [2020] EWHC 2424 (Ch) (10 September 2020) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2020/2424.html Cite as: [2020] ETMR 62, [2021] RPC 2, [2020] EWHC 2424 (Ch), [2020] ECC 32 |
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BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
SHORTER TRIALS SCHEME
7 Rolls Buildings Fetter Lane, London EC4A 1NL |
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B e f o r e :
____________________
| (1) SAZERAC BRANDS, LLC (2) SAZERAC COMPANY, INC (3) SAZERAC UK LIMITED |
Claimants |
|
- and – |
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| (1) LIVERPOOL GIN DISTILLERY LIMITED (2) HALEWOOD INTERNATIONAL LIMITED (3) HALEWOOD INTERNATIONAL BRANDS LIMITED |
Defendants |
____________________
Mr Tom Moody-Stuart QC and Mr Thomas Jones (instructed by TLT LLP) for the Defendants
Hearing dates: 14, 15, 17 July 2020 (trial held fully remotely, by Skype for Business)
____________________
Crown Copyright ©
Mr Justice Fancourt :
This judgment comprises the following sections:
I. Introduction (paras 1-11)
II. The bourbon market and the rival products (paras 12-24)
III. The relevant law of trade mark infringement (paras 25-46)
IV. The average consumer of bourbon (paras 47-56)
V. Likelihood of confusion (paras 57-79)
VI. Reputation of
Eagle
Rare
(paras 80-88)
VII. Did the Defendants take unfair advantage of
Eagle
Rare?
(paras 89-110)
VIII. Is there detriment to the distinctive character of
Eagle
Rare?
(paras 111-115)
IX. Conclusions and ancillary matters (paras 116-121)
I. Introduction
EAGLE
RARE":
one an EU registered trade mark no. 2597961, filed on 1 March 2002 in respect of class 33 alcoholic beverages (not including beers), spirits (beverages), whiskey and bourbon whiskey, and the other a UK registered trade mark no. 1148476, filed on 10 February 1981 in respect of class 33 whisky and disclaiming any exclusive right to the word
RARE.
On 22 June 2018, the First Defendant filed an application to register a UK trade mark for the word mark "
AMERICAN
EAGLE"
in respect of class 33 alcoholic beverages (except beers) and spirits. This was registered unopposed on 21 September 2018 as UK trade mark no. 3319844. An application to register an EU trade mark for
AMERICAN
EAGLE
was filed on 18 October 2018 and was opposed by the Claimants. That application was withdrawn on 24 January 2020.
i) First, that the
AMERICAN
EAGLE
sign is similar to the
EAGLE
RARE
trade mark and is used in relation to identical goods, namely bourbon whiskey, and there is consequently a likelihood of confusion on the part of the UK and EU public.
ii) Second, that the sign
AMERICAN
EAGLE
is similar to the trade marks
EAGLE
RARE,
which have a reputation in the UK and in the EU, and the use of
AMERICAN
EAGLE
takes unfair advantage of the distinctive character or repute of
EAGLE
RARE
and/or is detrimental to its distinctive character.
Eagle
Rare
is a well-established, high quality Kentucky straight bourbon whiskey made by Sazerac Company, Inc at the Buffalo Trace Distillery, Frankfort, Kentucky. It was first made in 2001 and is marketed in two expressions of the brand, a 10-year old version and a 17-year old version. The 10-year old is made only in limited quantities and is available in the UK only "on allocation" (i.e. the amount for sale in the UK depends on the amount released each year and allocated to the UK by Sazerac) and it is sold only in limited outlets in the UK. The 17-year old is very scarce indeed and much sought after by cognoscenti of aged bourbon. The RRP of the 10-year old is around £35 for a 70 cl bottle and the RRP of the 17-year old is in the region of £120 for a 70 cl bottle, when available at all in the UK.
American
Eagle
as a brand was conceived by Mr Stewart Hainsworth, the CEO of the Halewood Group of Companies (of which all three Defendant companies are members) in June 2018. The Second Defendant now sells the brand in three expressions: a 4 year old, an 8 year old and a 12 year old version. Each is a Tennessee straight bourbon. The 12 year old was launched in late February 2019 at about £65 for a 70 cl bottle, though the price has since been reduced, and it was only released in small quantities. That is therefore the date at which alleged infringement of the
Eagle
Rare
trade marks has to be assessed. The 4 year old was released in September 2019 at around £25 a bottle, in larger quantities. The 8 year old version has only very recently been released, in limited quantities at around £40 a bottle. Both these prices have been reduced somewhat in recent times in order to promote the brand.
American
Eagle
bourbon sold by the Second Defendant was the 4 year old version. Mr Hainsworth accepted that, going forward, about 95% of sales would be of the 4 year old. Once sufficient stocks of aged liquor are available, it will be promoted to supermarkets and other multiple retailers, but to establish the brand fully will take between 5 and 10 years, he said.
Eagle
Rare
has an established reputation among UK and/or EU consumers and whether, either intentionally or recklessly, the Second Defendant took unfair advantage of that reputation and the First Claimant's trade marks by registering and using its own
American
Eagle
trade mark. The Claimants allege that the Defendants unfairly set about taking advantage of the
EAGLE
RARE
heritage and reputation in the way that they named and positioned their brand.
II. The bourbon market and the rival products
American
whiskey in particular, who also owns bars and restaurants and who previously worked as a brand ambassador for Diageo. He was called by the Defendants. Both experts provided me with a valuable insight into the nature of the market and both were open and straightforward in giving their evidence.
American
whiskey comprises about 10% of the total UK retail market in whisky products. About 90% of that 10% share is attributable to sales by the best known manufacturers of
American
whiskey, Jack Daniels and Jim Beam. (Strictly, Jack Daniels is not a bourbon because its cereals mash does not include at least 51% corn, but not because it is made in Tennessee rather than Kentucky: a bourbon can be made in any US state, though the majority of it is made in Kentucky.) The vast majority of the US whiskey sales in the UK are at a "value" or "entry" level, or for "mass market" purchase, priced in supermarkets in the region of £14 to £18 a 70 cl bottle. There are also supermarket "own brands" competing at the same level at a more competitive price. The experts agreed that that leaves a small share of the
American
whiskey market divided between at least two further categories, which Mr Allanson called the "middle ground" and "premium" bourbons, and which Mr Stephenson called "premium" and "super premium". Despite the different names used, they were talking about the same categories, priced respectively at between £20 and £30+ and between £30+ and about £50 a bottle. There is arguably also a tiny top tier of very exclusive, ultra premium products retailing at much higher prices.
Eagle
Rare
10 year old at the upper end of the middle category, whereas Mr Stephenson placed it in his super premium category. The RRP of about £35 suggests that it is just above the middle category, but both experts agreed that in terms of quality
Eagle
Rare
punches above its weight, which is another way of saying that it is very competitively priced for its quality.
Eagle
Rare
17 year old is agreed to be in the very highest tier of most exclusive and expensive
American
whiskeys.
Eagle
Rare
is estimated by Nielsen to have sold 351 9-litre equivalent cases (4,212 bottles), and in 2019 504 cases (6,048 bottles). The figures for on-sales derived from CGA are shown to be zero, i.e. a statistically negligible amount, so the sales achieved by
Eagle
Rare
appear to be almost all for consumption at home rather than in bars and restaurants. Those figures suggest a very healthy increase in sales of 43.6% over the two years in question. The value of these sales of
Eagle
Rare
is shown by Nielsen to be £162,354 in 2018 and £216,118 in 2019, an increase of 33.1%. The average price per bottle is shown as £35.97 in 2018 and £33.35 in 2019.
Eagle
Rare
is, nonetheless, a much smaller product than the better known middle to premium quality brands that it competes with in the UK market. It is sold in some Waitrose stores and has been for 10 years, but the number of such stores stocking
Eagle
Rare
was unspecified; otherwise, apart from Ocado and Majestic, it is only sold through smaller and specialist outlets. Mr Stephenson professed himself surprised to learn that it was stocked in any multiple retailer, because it was a recognised high quality niche product, with limited availability - well known and valued by connoisseurs but little known in the broader market. Mr Allanson described
Eagle
Rare
as a "high end" and highly regarded product, with an excellent reputation spread mainly by word of mouth, known of and found in exclusive and
rarefied
bars but not in the mass market, whose sales only amount to a small segment of the premium UK market in bourbon.
Eagle
Rare
also scores highly in blind tastings, the results of which are published in the national press on occasions, and it has won a number of prestigious awards in the industry. It is also lauded in books such as those written by Mr Stephenson, who has sold up to 20,000 copies of each.
Eagle
Rare.
There is a limit to the amount of cases that the Claimants can sell anywhere: the amount of aged liquid that was distilled 10 years previously and still remains in charred oak barrels in Kentucky. Only a part of that is then allocated to the UK and EU markets. I accept the evidence of Mr Comstock, a Marketing Director of Sazerac, that there is great demand for
Eagle
Rare
each year when it is released and that if there was an unlimited source of aged liquid Sazerac would be able to sell (across all markets) twice the volume that it does sell. Ms Edwards said that she would be able to sell twice the allocation in the UK.
Eagle
Rare,
neither expert had previously heard of
American
Eagle.
This has to date only been released to a limited extent, so the lack of knowledge is understandable. The launches were low key because the Defendants did not have a substantial volume of the product to sell; there has been no significant marketing activity, so much so that the Claimants were not aware of the sale of
American
Eagle
until more than 6 months after its release. To June 2019, only 83 half cases (6 x 70 cl) had been sold; by June 2020 2,478 half cases. It is sold at certain specialist retailers and online by Ocado, and is stocked by certain high end bars in London and elsewhere.
American
Eagle
as competing with
Eagle
Rare
but rather with Jack Daniels and Woodford Reserve and Woodford Double Oak. Nevertheless, the price of
Eagle
Rare
10 year old sits very close to the now reduced price of
American
Eagle
8 year old and appears to be broadly comparable, though
American
Eagle
obtains its aged liquid from a small family distillery in Tennessee. Mr Stephenson considered that
American
Eagle
12 year old would cross over to some extent with sales of
Eagle
Rare
10 year old, online and in bars, and that
American
Eagle
4 year old would compete with
Eagle
Rare
in the craft cocktail market.
Eagle
Rare
17 year old is on a much higher level with few if any peers.
American
Eagle
8 year old will be a direct competitor with
Eagle
Rare
10 year old, with
American
Eagle
12 year old at a slightly higher and considerably more expensive level. The 4 year old version is a little lower in price and will compete both with mass market brands and to some extent with the middle or upper-middle level products such as
Eagle
Rare.
The volume of sales through multiples to which the Defendants aspire will be far in excess of sales and exposure of
Eagle
Rare.
As a result, in time, more consumers of bourbon whiskey would become aware of
American
Eagle
than are aware of
Eagle
Rare.
III. The Relevant Law of Trade Mark Infringement
"Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trademark, the proprietor of that EU trademark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;
(b) the sign is identical with, or similar to, the EU trademark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trademark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) the sign is identical with, or similar to, the EU trademark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark."
American
Eagle
sign and the
Eagle
Rare
trade mark, though they suggest that the degree of similarity is low. The Court will have to assess the degree of visual, aural and conceptual similarity. So far as article 9.2(c) is concerned, the issues in dispute are whether the
Eagle
Rare
trade mark has a reputation and whether the Defendants' use of the
American
Eagle
sign takes unfair advantage of the distinctive character or the repute of the
Eagle
Rare
mark or is detrimental to its distinctive character. The Defendants accept that if it is established that
Eagle
Rare
has a reputation then the use of the sign will give rise to a link with the trade mark in the mind of the average consumer. It is therefore possible to limit my summary of the directly applicable legal principles to these issues.
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well-informed and reasonably circumspect and observant, but whorarely
has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all the other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
"… It cannot be denied that, in the context of a uniform interpretation of Community law, a knowledge threshold requirement emerges from a comparison of all the language versions of the Directive.
23. Such a requirement is also indicated by the general scheme and purpose of the Directive. In so far as Article 5(2) of the Directive, unlike Article 5(1), protects trademarks registered for non-similar products or services, its first condition implies a certain degree of knowledge of the earlier trade mark among the public. It is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trademark, may possibly make an association between the two trademarks, even when used for non-similar products or services, and that the earlier trade mark may consequently be damaged.
24. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.
25. It cannot be inferred from either the letter or the spirit of Article 5(2) of the Directive that the trademark must be known by a given percentage of the public so defined.
26. The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.
27. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
28. Territorially, the condition is fulfilled when, in the terms of Article 5(2) of the Directive, the trademark has a reputation "in the Member State". In the absence of any definition of the Community provision in this respect, a trade mark cannot be required to have a reputation "throughout" the territory of the Member State. It is sufficient for it to exist in a substantial part of it."
Eagle
Rare's
reputation, the relevant part of the UK public was (1) that with contact with or exposure to the whisky market generally or (2) that with contact with or exposure more specifically to the bourbon market; nor is this a point that has been expressly decided in any domestic or European authority that the parties' lawyers could find. The Claimants submitted the latter, on the basis that they had only marketed bourbon and so could only have established a reputation for a brand of bourbon. The Defendants submitted the whisky market generally, on the basis that the First Claimant's UK trade mark is registered for the broader specification of "whisky", not "bourbon", as the EU trade mark is. They argued that an attempt to gain wider protection of the mark in the whisky market as a whole meant that a reputation had to be established across that wider market, if reputation was to be invoked, otherwise a claimant could obtain much wider extended protection for a mark on the basis of a broad specification but narrow use.
"38. … first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27).
39. As regards detriment to the distinctive character of the mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar mark by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29).
40. As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third-party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.
41. As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but the advantage taken by the third-party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28)."
Eagle
Rare
trade marks and taking unfair advantage of the distinctive character or the repute of the trade marks are relied on by the Claimants.
"44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the court has already held that, the stronger that Mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).
45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
46. In the present case, it is a matter of agreement that Malaika and Starion use packaging and bottles similar to the marks with a reputation registered by L'Oreal and others in order to market perfumes which constitute 'downmarket' imitations of the luxury fragrances for which those marks are registered and used.
47. In that regard, the referring court has held that there is a link between certain packaging used by Malaika and Starion, on the one hand, and certain marks relating to packaging and bottles belonging to L'Oreal and others, on the other. In addition, it is apparent from the order for reference that that link confers a commercial advantage on the defendants in the main proceedings. It is also apparent from the order for reference that the similarity between those marks and the products marketed by Malaika and Starion was created intentionally in order to create an association in the mind of the public between fine fragrances and their imitations, with the aim of facilitating the marketing of those imitations.
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
50. In the light of the above, the answer to the fifth question is the Article 5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of the mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
"… there is nothing in the case law to preclude the court from concluding in an appropriate case that the use of a sign the objective effect of which is to enable the defendant to benefit from the reputation and goodwill of the trade mark amounts to unfair advantage even if it is not proved that the defendants objectively intended to exploit that reputation and goodwill."
"42. Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions.
43. None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case'."
A key consideration in any such case is how distinctive the earlier mark is.
"So far as a requirement for a change in economic behaviour is concerned, the CJEU has held that proof that the use of the sign is or would be detrimental to the distinctive character of the trademark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the trademark is registered or a serious likelihood that such change will occur in the future: see Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-383/12) EU:C:2013:741; [2012] E.T.M.R. 54 (at [34] – [43]). It by no means follows that there is a requirement for evidence of a change in the economic behaviour of consumers of the trademark proprietor's goods or services in order to establish the taking of unfair advantage of the distinctive character or repute of the trade mark. In my judgment, it should be sufficient to show a change in economic behaviour of customers for the defendants' goods or services in order to show that the use of the sign is taking unfair advantage. In Jack Wills Ltd V House of Fraser (stores) Ltd [2014] EWHC 110 (Ch); [2014] FSR 39, Arnold J proceeded on an assumption to that effect as a result of a concession by counsel (see at [82]) but I consider the concession to be correctly made. I do not think, however, that change of economic behaviour provides the answer to this case…. "
Thus it appears that a logical inference that there will be a change in economic behaviour by those purchasing a defendant's goods will be sufficient to establish an advantage taken of the distinctive character or repute of the claimant's trade mark but, as the decision in the Argos case showed, not necessarily sufficient to establish an unfair advantage. How these principles apply in the case of a defendant starting a new business or product line is not clearly established.
IV. The average consumer of bourbon
Eagle
Rare.
rarer
and more expensive item, such as a high quality watch, or a product where the exact identity is important, such as pharmaceutical products. Loyalty to brand has a part to play, in that, e.g. a smoker of cigarettes is generally accepted to pay fairly close attention to the brand of the packet that they are buying. It is also, in my judgment, necessary to have regard to the range of circumstances in which the purchase of bourbon whiskey is likely to take place. Much entry level bourbon will be bought in supermarkets and in pubs and clubs; higher quality products more often in restaurants and bars, off-licences or online.
Eagle
Rare
10 year old, since the
Eagle
Rare
trade mark is registered for whisky and bourbon generally. It is inappropriate to seek to identify specific characteristics of an average consumer, beyond their reasonable degree of knowledge, circumspection and perceptiveness, or any average circumstances of purchase. It would perhaps be more appropriate to refer to "average consumers" of bourbon, given that the applicable test is whether a significant proportion of the relevant public is likely to be confused. What the concept of average consumer does do is exclude from the range of persons in consideration idiosyncratic purchasers, such as scholars, journalists or collectors, and consumers at each end of the range of knowledge, circumspection and attentiveness. Particularly knowledgeable consumers are therefore excluded, as are those who have no knowledge of or care about what they are buying. However the average consumer is not necessarily the drinker of the bottle that they buy; they may be buying a gift for someone else to consume.
Eagle
Rare
and similar high end brands are more "in the know" about their bourbons.
American
whiskeys to drink as mixed long drinks, or as shots, who tend to stick with one brand but are price sensitive and may go for what is cheapest. Second, those who drink neat bourbon or strong cocktails, who consume the more premium brands and cherish regular brands but also explore new brands. Third, people transitioning from the first class to the second class. He said that the level of discernment in the second category is quite high, ranging from those with a few bottles at home and a knowledge of cocktails to the serious aficionados, who join clubs and internet forums. A dedicated bourbon drinker in the second category would tend to research and understand what they are drinking, whereas a first category drinker is more driven by brand loyalty and price.
American
whiskey. I accept, on the evidence that I heard, that this is more so than with buyers of other spirits.
Eagle
Rare
10 year old) consumers would exercise more care and be more attentive to what they were buying, and be more discriminating. However, I do not see that feature as being particularly distinctive of the bourbon market. Neither does that level of attentiveness of the top decile of the market raise the attributes of the average consumer of bourbon to one of high attentiveness. I do however carry forward to the final analysis a conclusion that there is a greater than usual degree of brand loyalty within the bourbon market and so, on average, the consumer has a somewhat higher degree of attentiveness than a consumer of certain other spirits.
V. Likelihood of confusion
American
Eagle
is the same product as
Eagle
Rare,
or
Eagle
Rare
is the same product as
American
Eagle,
or whether
American
Eagle
and
Eagle
Rare
are produced by the same or economically linked undertakings. The trade marks and the sign are acknowledged to be at least similar and the goods are identical, viz bourbon whiskey.
Eagle
Rare
trade marks.
Eagle
Rare
self-evidently comprises two separate words, one of which is a strong substantive and the other an adjective, in the nature of a qualification or description. That is not to treat the mark as if it were
Eagle
rather than
Eagle
Rare
but only to observe that the average consumer would regard the word
Eagle
as the more distinctive component and the word
Rare
as relating to the quality of the product. Use of "
rare"
in this way is common in the aged spirits market and would be recognised as such by the average consumer of bourbon. The words "
Eagle
Rare"
would not in my judgment be read by the average consumer as describing or referring to a
rare
species of
eagle,
e.g. a golden
eagle.
American
Eagle
is similar in that it includes the word "
Eagle",
though as the second rather than the lead term, and in that
Eagle
is qualified by an adjective, "
American".
The word
American
is also strong, much stronger than "
Rare",
so that the sign would more naturally be read as a composite whole. That is because the two words are more naturally linked than the words
Eagle
and
Rare,
when read in that order. The word "
American"
has additional visibility because it comes first. I reject the Claimants' argument that "
American"
is weak because it does no more than state the obvious, viz that bourbon is an
American
product. There is nevertheless similarity in visual terms, given that the substantive
Eagle
appears in both mark and sign as a strong component.
American
Eagle
conjures up an image distinct from something or anything
American
and an
eagle:
it conjures up an image of a bald
eagle,
a particular type of
eagle
native to North America and an iconic symbol (and the national bird) of the United States of America. I therefore consider that, conceptually, the trade mark and the sign are distinct and not strongly similar.
eagle"
is more noticeable for coming first in the trade marks. There is therefore a difference in aural perception if the full names of the trade marks and sign are used. I accept the evidence of Mr Allanson that
Eagle
Rare
is on occasions abbreviated to
Eagle,
though there was no evidence of the extensiveness of this use and I find that it is occasional rather than generally established. To the extent that either brand is abbreviated, the degree of similarity is obviously increased. There is, bearing in mind these points, therefore some similarity in the mark and the sign in aural terms.
Eagle"
or "
Eagle
Special" the degree of similarity would in my judgment have been much greater; the reason it is less marked is on account of the strength of the word "
American"
and the conceptual difference arising from the conjugation of the words "
American"
and "
Eagle",
as explained above.
Eagle
Rare
is sold. I am not persuaded that there is any other context or circumstances that are material. Thus, the impression likely to be made on purchasers of bottles from retail stores (including supermarkets, when the Defendants' 4 year old product is produced and released in greater quantities and more widely in due course) and off-licences, both for personal consumption or for others to consume, and on buyers of drinks in pubs, bars and clubs and restaurants, and on online purchasers, must all be considered. Purchase in a retail store is likely often to be under some pressure of time or other constraints; on-licence purchases may well be in noisier environments, where the visual appearance of the name is either unavailable or obscured and the full name may not be heard. Online purchases are likely to be conducted in a more considered way, in a quieter environment.
American
Eagle
is the same product as
Eagle
Rare,
or vice versa. Some, with a partial recollection of one or other name may be confused, but I doubt that a significant proportion would be. My reason, in addition to the point about degree of attention to what is being purchased, is that there is overall a sufficient degree of difference between the mark and the sign for consumers not to believe that they are the same product. This is principally because of the strength and image of the name
American
Eagle,
which is conceptually different from
Eagle
Rare.
American
and
Eagle
together form a strong composite sign in a way that "New
Eagle"
or "
Eagle
Special" would not, and would be perceived by a consumer as a composite whole. Although the goods are identical, the average consumer would know that there are various different brands available.
Eagle
Rare
trade mark, it is however clear to me that the average consumer who sees or hears the sign
American
Eagle
would be likely to call
Eagle
Rare
to their mind. This is not a matter of enhanced distinctive character arising from the extent of use made of the mark; it is a case of the mark being distinctive per se, in that no other bourbon whiskey on the UK and EU markets at the relevant time had a name that used the word "
eagle".
The evidence covered other US brands with
eagles
featuring on the label of the bottle and one limited issue US bourbon brand with "
Eagle"
in the name ("War
Eagle").
However, only 7 bottles of this were available on or through specialist whisky exchanges in the UK: these bottles had clearly "leaked" out of the US and the evidence was that they were not marketed generally in the UK or EU. There is therefore a natural association in the mind of the consumer between a new brand using the word "
eagle"
and
Eagle
Rare,
given the coincidence of the product and the name, even if the average consumer would not instinctively consider them to be one and the same product.
American
Eagle
4 year old will have brought to their mind
Eagle
Rare
and, as a result, will buy the
American
Eagle
product, if nevertheless they are aware that the bottle that they are buying is not
Eagle
Rare
nor produced by an undertaking associated with
Eagle
Rare.
Eagle
Rare
and
American
Eagle
within that market. Mr Stephenson (with whom Mr Hainsworth and Mr Bradbury, an employee of the Second Defendant, agreed) said that it was a very common pattern in the whisky and bourbon market to have many different expressions under the same branding, including plays on the brand name. The examples of Jack Daniels producing Gentleman Jack and Winter Jack and Famous Grouse producing The Snow Grouse and Black Grouse were put to Mr Stephenson, who agreed that they were examples of this pattern. In re-examination, Mr Stephenson said that a collection of expressions might have different age statements, and the bottle shape generally stayed much the same, though perhaps with different labelling, and "obviously the name of the brand will still be there".
American
Eagle
bottles do not of course use the name
Eagle
Rare
anywhere on the bottle.
American
Eagle,
though this is not wholly surprising given the novelty, low-key launch and limited release to date of that brand, and further given the fact that Mr Bradbury had not instructed his sales team to inquire into and report on any incidents of confusion between
American
Eagle
and
Eagle
Rare
specifically. It is not uncommon in such cases for there to be little hard evidence of actual confusion. In those circumstances, the Claimants must satisfy me that it is inherently likely that such confusion will arise.
Eagle
Rare
and
American
Eagle
are connected brands. It is common for connected brands to have similar names: see the examples given in para 69 above. The average consumer would be aware of the fact that brands have different expressions and connected products, and that distillers can make more than one brand. It is natural to consider, as Mr Allanson did when presented for the first time with "Yellow Rose" and "Heaven's Door", that there was a connection with the "Four Roses" and "Heaven Hill" brands. He had not heard of the smaller brands, so he approached this question in the same way that an average consumer would, though he accepted that with scrutiny of the label and using his expertise the difference could be established.
Eagle
Rare
and
American
Eagle
is similar, in that prior to
American
Eagle's
launch there was no other bourbon in the relevant market using the name "
Eagle"
as part of its brand name. It is a distinctive component of the brand name. Another identical product in the same market with "
Eagle"
in its name would not only call
Eagle
Rare
to mind but would be likely to cause the average consumer to assume that they were connected in some way. That is so even though
American
Eagle
has a strong composite identity, because of the presence of the word "
Eagle".
I do not consider that the fact that
American
Eagle
is Tennessee bourbon rather than Kentucky bourbon makes any difference, since the average consumer will not have this distinction in mind, and even if they did it would not negate the possibility of an economic link between the respective undertakings. It goes only to support the conclusion that the products would not mistakenly be thought to be the same.
American
Eagle
4 year old is established and becomes more widely known than
Eagle
Rare,
having been positioned by the Defendants to compete with Jack Daniels and the like in the mass market, it will be natural for a consumer to assume that
Eagle
Rare
is a special version of
American
Eagle.
Eagle
is not material to the issue of whether the average UK or EU consumer would be confused because it is not (save to an exceptionally limited extent, and unofficially) available in those markets. In any event, I accept the explanation of Mr Comstock, the senior marketing director of the Second Claimant, that it was not troubled by possible confusion of brands in the United States because it produced (and so had control of) War
Eagle
specifically for a restaurant depot, for use in restaurants only, and therefore there would be little opportunity for consumers to be confused. The fact that, perhaps inevitably, some bottles appear (from searches belatedly done by the Defendants) to have leaked into the specialist retail market in the United States makes no difference to this: the numbers available are miniscule. Moreover, whether confusion might arise on the US market in those circumstances has little if anything to do with the question of whether UK or EU consumers would be likely to be confused about a connection between
American
Eagle
and
Eagle
Rare.
American
Eagle
and
Eagle
Rare
are related brands.
Eagle
Rare
is sold in such small quantities, with only limited exposure and very little promotional marketing, that only a tiny fraction of the relevant market will have any knowledge of it, a fraction that is too small for it to claim a reputation under art 9(2)(c). The Claimants contend that the level of sales and exposure to the market over nearly 20 years, combined with a significant degree of publicity in mainstream press from the numerous awards and accolades that
Eagle
Rare
has received over that time, coverage in specialist whisky publications and exposure in Waitrose, Ocado and Majestic Wine, means that it is well known as a superior product in the bourbon market, though inevitably better known by connoisseurs than by those buying entry level products. The relatively small sales do not betoken a lack of interest or appetite:
Eagle
Rare
is sold on allocation only and the Claimants have too little aged liquid available to be able to satisfy the market demand.
Eagle
Rare
were sold in the UK in the twelve months ending July 2019 (making some allowance for Irish sales), the equivalent of 1500 to 1600 9-litre cases. Using Nielsen's figures to establish the relative proportions of the off-trade market,
Eagle
Rare
has a tiny share of the
American
Whisky market, even if the Claimants own volume sales figures rather than Nielsen's assumed figures are used: 1500 cases out of nearly 1.4 million cases in 2019, or out of approximately 135,000 cases that were neither Jack Daniels nor Jim Beam. The latter comparison gives a more realistic indication of the share of the middle and top end markets combined in which
Eagle
Rare
competes.
Eagle
Rare's
proportion of this part of the market was established in cross-examination to be 0.34%. The proportion of the on-trade market was statistically insignificant. Distribution levels for
Eagle
Rare
are at about 2% of the retail outlets covered by Nielsen's sample, compared with 20-35% for larger brands such as Wild Turkey and Bulleit, with a rate of sale lower than that of the larger brands. I accept that the low rate of 2% may be partly the consequence of
Eagle
Rare
not being stocked by most multiple retailers or convenience stores. As Ms Edwards said,
Eagle
Rare
is not far less known, just far less distributed in the off-trade market. I accept that is probably so, though as Mr Comstock said Buffalo Trace as a brand is known by more people in the UK, whereas
Eagle
Rare
is more popular with the aficionados.
Eagle
Rare
to the market was limited to those who purchased bottles or drank it in high end bars, or at least only gained exposure via those purchasers in that they will have spoken about it to friends. I do not accept so limited an impact. Although the evidence of social media coverage and blogs was very limited, the writing up of the product in the national and London press is likely to provide significant exposure, as is word of mouth from those who have bought or tried
Eagle
Rare.
Laudatory coverage in books such as those of Mr Stephenson (who referred to it in his evidence as a "popular brand", by which he said he meant its reputation as well as its renown) is significant, as are the regular double spreads of Sazerac brands in Whisky Magazine. The presence of
Eagle
Rare
in specialist online retailers also provides exposure, as to an extent do the Waitrose, Ocado and Majestic listings.
Eagle
Rare
is not a mass market product: it is a premium brand that is only ever likely to appeal to a part of the bourbon market, and it has relatively small releases annually into the UK and EU. But that does not mean that it has no reputation in those markets. The share of the French red wine market enjoyed by Chateau Lafite-Rothschild is likely to be similarly tiny, but no sane person would suggest that it has no reputation in the wine market on that account. The esteemed first growth and
Eagle
Rare
are of course not comparable in various respects and the comparison is merely illustrative of a particular point, but it is an example of why low sales and limited market penetration are not the end of the matter. A significant contributing factor to the reputation of Lafite-Rothschild is its presence since 1855 at the top of the industry classification, with reputation spreading by word of mouth over a longer period of time, supported by some well-targeted but relatively limited advertising, and much press and journalistic comment. There are however very few who are able to expound on its quality from first-hand experience.
Eagle
Rare
has been produced and exported to the UK since 2001. The UK advertising budget controlled by the Third Claimant is small – around £10,000 a year – but it emerged from Mr Comstock's evidence that the Second Claimant funds a double page colour spread of some of the Sazerac brands, including
Eagle
Rare,
in each edition of Whisky Magazine.
Eagle
Rare
has collected numerous prestigious awards in the whisky industry, which themselves, to some extent, trigger press coverage. It is frequently included in comparative surveys of bourbon and
American
whiskey in the national and London press. It is sold in Waitrose and Majestic Wine (though it was not clear in how many branches of these), online by Ocado, and by specialist retailers such as The Whisky Exchange and Master of Malt. Ms Edwards agreed that there may be about 40 people a month who are chosen and invited by the Third Claimant to tastings of
Eagle
Rare,
and doubtless the choice is made with a view to maximising dissemination of the name and the quality of the brand.
Eagle
Rare
is well known among serious and discriminating bourbon drinkers and a popular brand, though less likely to be known in the mass market, I conclude that
Eagle
Rare
is sufficiently known to have a reputation in the bourbon market of the UK and the EU. Had it been material, I would also have found a sufficient reputation in the wider whisky markets: the double page spread in Whisky Magazine and the degree of cross-over in awards, comparative tastings and newspaper columns related to such matters demonstrate that bourbon is not an island but a significant and increasingly integrated part of a wider whisky market.
Eagle
Rare
in the UK and in the EU is simply too low. In Burgerista, the turnover was €9 million – higher than the gross revenue from EU sales of
Eagle
Rare
– but the significant point in that case was that the brand was only known in a few locations in Austria (not even in multiple locations throughout Austria) and one location in Germany. There was no evidence of penetration and knowledge elsewhere at all. Many people knowing of the brand in 7 individual towns or cities in the EU was simply too small a proportion of the EU population (or even of one Member State) for the brand to have established a reputation in a significant part of the EU. Although there is no evidence of the numbers of UK and EU citizens likely to have heard of
Eagle
Rare,
there are no geographic limits to the dissemination of the brand within the relevant market in the UK or a substantial part of the EU. I therefore do not consider that the Burgerista case assists the Defendants: this is not a case of a brand being well-known in very limited geographic parts of the relevant market.
VII. Did the Defendants take unfair advantage of
Eagle
Rare?
Eagle
Rare
but no confusion of the respective brands. If a significant part of the market is at risk of being confused in the way that I have found, the answer to article 9(2)(c) infringement is self-evidently that the sign is detrimental to the distinctive character of the trade marks. If, on the other hand, there is no confusion, there will still be infringement under article 9(2)(c) if unfair advantage or detriment can be proved by the Claimants.
eagle
mark.
Eagle
Rare?
The advantage alleged by the Claimants is a substantial degree of attraction to their own brand by association with the heritage and history of the Buffalo Trace Distillery in circumstances in which the
American
Eagle
product itself has no heritage or history, and by association with the high quality and repute of the
Eagle
Rare
product. Bourbon is a product whose image is based on long-established artisanal skills and an old-fashioned, simple way of life. Given the reputation of
Eagle
Rare,
a significant part of the market will form a link between
American
Eagle
and
Eagle
Rare,
even though they realise (on the assumption on which I am proceeding in this Part) that they are separate products. The Claimants say that "aura" associated with
Eagle
Rare
will be transferred to (or "rub off" on)
American
Eagle.
Eagle
Rare,
which will manifest itself in the way that consumers in the relevant market act. In other words, more consumers, faced with a choice of brands, will choose
American
Eagle
rather than other brands because of the association with
Eagle
Rare.
There is no positive evidence that this is so and the Claimants invite the court to deduce from the evidence about the bourbon market that there is a serious likelihood that it will be so.
American
Eagle
with the intention of taking advantage of
Eagle
Rare's
reputation and distinctive character. Second, the Defendants through Mr Hainsworth and others, were reckless about taking unfair advantage, because they failed to take the steps that a reasonable and honest person would have taken to see whether the sign chosen would be highly likely to have that effect on other registered trade marks. In their closing submissions, the Claimants sought to characterise the recklessness case as the Defendants being reckless as to a distinct risk that
American
Eagle
would take advantage unfairly of the reputation of an established brand.
American
Eagle
brand, and Mr Hainsworth's different explanation was not seriously challenged by Mr Mellor QC, who appeared for the Claimants with Mr Keay,. Neither did the Claimants in their closing submissions pursue a case based on intentional taking of unfair advantage in the naming of
American
Eagle.
I therefore do not consider that case further but make the following findings of fact.
American
Eagle"
and was immediately struck by what a good name it would be for the bourbon whiskey that he wanted to establish to add to the range of spirits that the Halewood Group was producing. On impulse and without thinking, he did a search in the trade marks register for "
American
Eagle"
only; he found that the only prior registration in class 33 in that name had not been renewed in 2017; and he immediately instructed his trade mark attorney to register an application for that trade mark for the sale of spirits and whiskey. I find that neither Mr Hainsworth nor the attorney searched in any other names.
Eagle
Rare.
The Second Claimant had at the time a substantial minority shareholding in West Cork Distillers, which had produced previously a whiskey called Skibbereen
Eagle,
named after the County Cork village where that distillery is found. West Cork Distillers conducted its trade mark affairs through the Second Defendant company because it did not have the resources to conduct its own trade mark affairs. The Second Defendant therefore applied to register Skibbereen
Eagle
as a trade mark and produced some design work, featuring an
eagle
in flight, for use with that product. The application was opposed by the Claimants at the time and a settlement agreement was eventually signed by the Claimants and the Second Defendant, which permitted West Cork Distillers to use the sign but only for Irish whiskey. It was evident from Mr Hainsworth's manner that he rather resented the need for West Cork to submit to the will of the Claimants in the way that it chose to do. With the benefit of hindsight, Mr Hainsworth seemed able to persuade himself, but not the court, that the settlement agreement had nothing to do with the Second Defendant or himself, save in so far as the Second Defendant was acting as agent for West Cork. It was not, he said, a matter with which he was at all concerned when seeking to establish the
American
Eagle
brand.
American
Eagle
brand and products. He later acknowledged that he might have thought about the settlement agreement at some stage. I find that he undoubtedly did, because he specifically instructed his design team to feature the Skibbereen
Eagle
graphics on the
American
Eagle
product, which they did. It is in my judgment impossible that Mr Hainsworth, as an experienced businessman, could have taken that step without realising that the Claimants had trade marks for
Eagle
Rare
and that they would be likely to object to his application for registration of
American
Eagle,
as they had objected to Skibbereen
Eagle.
On the other hand, he was entitled to hope for the best and wait to see whether an objection in due time was raised, which in the event it was not, by oversight of Mr Comstock's marketing department in Kentucky.
American
Eagle
on the basis of a risk of confusion or taking unfair advantage, or both. I find that he also was aware that any association with
Eagle
Rare
could do the Defendants no harm, given the novelty of their product on the market and the fact, as he put it in cross-examination, that "I do not have the strong provenance story".
American
Eagle
and the Claimants' rights. He was aware that the Claimants would be likely to object. Mr Hainsworth did not need to instruct his attorney to carry out searches for similarly named products because he knew of the
Eagle
Rare
marks.
Eagle
Rare
has an established (but not enhanced) reputation for high quality bourbon products, emanating from the historic Buffalo Trace Distillery in Frankfort, Kentucky. It produces only limited quantities of its 10 year old and 17 year old products, such that demand exceeds supply and there is no benefit in extensive advertising or marketing. It has therefore not spent heavily on building a reputation, but its repute has developed slowly through those "in the know", by word of mouth and press coverage.
American
Eagle
acquires its liquid from an unidentified family distillery in Tennessee and has (or had at the relevant time) no reputation. It marketed its 12 year old product at almost double the recommended price for
Eagle
Rare
10 year old and its 8 year old at a higher price than
Eagle
Rare
10 year old, albeit the prices have since been reduced in an attempt to promote the new brand.
Eagle
Rare
10 year old, but only marginally lower. The Defendants were therefore aiming to sell a new product at higher prices (for a comparable product) than the Claimants charged for their well-regarded, high quality product. Did a link with the Claimants' product give them that advantage? To reach that conclusion I would need to accept that the use of the name
American
Eagle
is likely to affect the economic behaviour of those in the market for aged bourbon, otherwise the Defendants will have obtained no advantage, unfair or otherwise.
Eagle
Rare
would be likely to benefit the Defendants. Average consumers looking for a mid- to upper-range aged bourbon would be more likely to buy it at a higher price if there were some association (albeit no confusion) with a quality and heritage product such as
Eagle
Rare.
I consider that
American
Eagle
does take advantage of the repute of
Eagle
Rare
in this way, though not all consumers will make the link owing to the limit to
Eagle
Rare's
reputation. The economic behaviour of the Defendants' target customer base would be likely to be affected by a link with
Eagle
Rare.
But would it be at the expense of
Eagle
Rare's
own market, or cause damage to the distinctive character of
Eagle
Rare,
such that the advantage was unfairly taken?
Eagle
Rare
is held, it is hard to see that there would be any commensurate loss to the Claimants. Consumers would not mistakenly or deliberately buy
American
Eagle
rather than
Eagle
Rare.
The price differential and repute is all in favour of
Eagle
Rare.
I am not persuaded that any actual or would-be purchaser of
Eagle
Rare
would switch to buy
American
Eagle
instead. Any advantage obtained by
American
Eagle
is much more likely to be at the expense of other value or mid-range brands in the market. Given that
Eagle
Rare
has not achieved its repute by dint of heavy advertising expenditure or investment in promotion, it cannot be said to be an unfair advantage because the Defendants are "getting a free ride" on the back of significant expenditure by the Claimants over the years (or, at least, no such significant investment was proved by evidence).
American
Eagle
will be likely to dilute or "whittle away" the ability of the trade marks to denote the Second Claimant's products, on the assumption (on which I have approached the alleged article 9(2)(c) infringement) that that there is no likelihood of a significant part of the relevant public being confused about the brands.
eagle"
association for whiskey in the UK and EU but their trade mark is not
EAGLE
and they are not entitled to a monopoly over that word. There is a benefit to the Defendants in calling to mind the trade marks of the Claimants and the high quality heritage product that they produce. However, in my judgment, that advantage to the Defendants is not objectively unfair so that, absent an intentional taking advantage or detriment to the distinctive character or repute of the trade marks, it should be considered an actionable infringement. The fact that the Defendants can be said to have been reckless as to whether the Claimants' rights were infringed does not, in my judgment, make the necessary difference.
VIII. Is there detriment to the distinctive character of
Eagle
Rare?
Eagle
Rare
but they do allege detriment to its distinctive character. I have concluded that the
Eagle
Rare
mark has distinctive character, but there is no evidence that the name
Eagle
Rare
will be less strongly indicative of the Claimants' product (absent confusion) as a result of the sale of
American
Eagle.
I must therefore consider whether as a matter of logical deduction there is likely to be such dilution in future, when the sales of
American
Eagle
(particularly the 4 year old) have grown to the levels at which the Defendants aim.
eagle"
will be associated with the Claimants' whiskey but whether
EAGLE
RARE
will less strongly signify the Claimants' brand as a result of the use of
AMERICAN
EAGLE.
The sign is not identical or close to being identical to the trade marks and so the question is whether another brand name using the word "
eagle"
will have the effect of diluting the connection between
EAGLE
RARE
and the Claimants' product. The presence of a larger brand using the word "
eagle"
in its name will give the word a greater degree of prominence on shelves in retail outlets that sell bourbon, and so "
eagle"
itself will become less
rare
on those shelves: a bottle of bourbon with the word "
eagle"
on it (or an
eagle
design) will be more often seen. But will that greater familiarity with the word "
eagle"
cause
EAGLE
RARE
to be less strongly connected with the Claimants' brand if there is no confusion between the brands?
Eagle
Rare
as a brand was explained by the expert witnesses to have something of a mystique about it, attributable to its reputation as a "hard to find" whiskey.
Eagle
Rare
were being used in connection with the sale of something other than spirits it is easy to see that
Eagle
Rare
could become less associated with the Claimants' product and more associated with something different. But that is not what will happen if the Defendants continue to use the sign on their bottles of whiskey. The sign is similar to but different from the trade marks and has its own strong conceptual identity. The word "
eagle"
will no longer on its own call to mind only the Claimants' whiskey but the question is whether the mark
EAGLE
RARE
will continue to do so. In the anglophone world, the difference is in my judgment such that there will be no dilution of the trade marks. A consumer would not buy
American
Eagle
instead of
Eagle
Rare
because of an association in their mind with
Eagle
Rare,
or consider that
American
Eagle
was
Eagle
Rare.
On the contrary, to the extent that
American
Eagle
calls to mind the trade marks the consumer will continue to be aware that
Eagle
Rare
is something distinct.
EAGLE
RARE
will be more readily eroded by the use of
American
Eagle.
That seems to me to be unevidenced conjecture and I am unpersuaded. The distinction is primarily by virtue of the word "
American",
which would readily be noted and understood in any part of the EU.
American
Eagle
will not cause detriment to the distinctive character of the trade marks. Of course, on the basis of my prior conclusion that a significant part of the market would be confused as to whether
American
Eagle
and
Eagle
Rare
come from the same stable or are economically linked undertakings, there is also detriment to the distinctive character of
Eagle
Rare.
IX. Conclusions and ancillary matters
American
Eagle mark and the Second Defendant carried on the business of selling the product. The Third Defendant is a company in the Halewood Group but no distinct allegation of infringement was made against it. Instead, it appears that the Third Defendant was originally sued because it was the owner of other trade marks, to which the Claimants originally objected but have in the course of these proceedings withdrawn their objection. It was also the Third Defendant who applied to register the mark VERA LYNN, but nothing turns on that so far as any relief against the Defendants is concerned.