News

19 JANUARY 2010: Mr Justice Arnold today handed down judgment in Diageo v. ICB  [2010] EWHC 17 (Ch), an “extended form” passing off case, holding that VODKAT, a fermented alcohol and vodka-based schnapps drink which has been on sale widely throughout the country since 2005, was being misrepresented as a vodka.
 
The claimants, Diageo, are the biggest beer, wine and spirits company in the world. Among their portfolio of household name brands is Smirnoff vodka. The defendants, ICB, are a substantial British drinks business. One of their products is called VODKAT, which is a clear liquid, sold in a clear bottle. Two different get-ups were in issue.
 
Diageo’s complaint was not that VODKAT was passing itself off as Smirnoff (conventional passing off), but that its name and get-up misrepresented the product as a vodka (“extended form” passing off). Relying on the long line of cases from Spanish Champagne, to Advocaat, and Scotch Whisky to Chocosuisse, Diageo argued that vodka was entitled to the same protection because it was a well-defined category of drinks. ICB argued that vodka was not entitled to this sort of extended protection because it was not a product with “cachet” as all those products had been, and if vodka was protectable, then any describable product would be. Furthermore, ICB argued, there was no misrepresentation and no damage.
 
Arnold J held that goodwill did exist in the name vodka, by analogy with the previous caselaw, and that on the facts there had been misrepresentation and damage.
 
A further hearing is to take place to deal with the form of order.
 
Roger Wyand QC and Simon Malynicz, of Hogarth Chambers, instructed by Pinsent Masons LLP,  acted for ICB.