The Patents Court handed down a judgment on 19 January 2010, in a case of “extended” passing off concerning a product called “VODKAT” marketed in the UK by Intercontinental Brands (“ICB”), the successful claimant was Diageo, who owns the Smirnoff Vodka brand.
VODKAT is a fermented alcohol and vodka-based product which had been on sale in the UK since 2005. Diageo complained that the VODKAT name and the product bottle and labelling (called “get-up”) misrepresented the product as Vodka. Vodka is a term reserved for spirits containing 37.5% absolute volume of alcohol. VODKAT only contains 22% alcohol.
This case follows a number of cases in the food and drinks sector where extended passing off has been found in the UK, e.g. in cases regarding Champagne, Scotch Whisky, Advocaat, Sherry and Swiss Chocolate.
The requirements of the law of Passing Off summarised in the judgment are:
- A misrepresentation;
- Made by a trader in the course of trade;
- To prospective customers of his, or ultimate consumers of goods and services supplied by him;
- Which is calculated to injure the business or goodwill of another trader; and
- Which causes actual damage to the business or goodwill of the trader.
Evidence of confusion came from the leading UK supermarkets Tesco and Sainsburys, from pubs and clubs, from consumers, from customer complaints to ICB, and from internet blogs. Trading Standards Officers also gave evidence that VODKAT was a misleading product.
The judge held that there had been a misrepresentation and damage, and in his final order on 2 February 2010, he granted a qualified injunction which prevents ICB from using the name VODKAT without making it clear that the product is not vodka. The judge stated that it will be challenging for ICB to succeed in clearly distinguishing VODKAT from Vodka. However, ICB indicated that they are considering applying in the future for a declaration in relation to their proposed new get-up for VODKAT.
Source: Diageo v ICB  EWHC 17 (Ch) Judgments of Hon Mr Justice Arnold 19 January 2010 and 2 February 2010.