Diageo calls for injunction against Bulleit lookalike

Diageo is seeking an injunction to prevent the sale of Redemption whiskey in its current packaging after a recent lawsuit concluded that the bottle diluted Bulleit’s trademark.

Diageo initially sued Deutsch Family Wine & Spirits in 2017 over the redesign of Redemption whiskey, claiming the bottle has been ‘revised to closely mimic’ its Bourbon and rye whiskey brand, Bulleit. The complaint was filed in the US District Court for the Southern District of New York.

A ruling last Thursday (2 June) concluded that Deutsch’s Redemption packaging does not infringe on the Bulleit trademark by creating consumer confusion. The jury also rejected Diageo’s allegation that Deutsch acted in bad faith when designing its Redemption bottle.

However, the jury noted that the Bulleit trademark is ‘valid and protectable’, with Deutsch’s Redemption packaging diluting the Diageo-owned bottle. Deutsch Family Wine & Spirits said it intended to appeal this finding.

Tom Steffanci, president, Deutsch Family Wine & Spirits, said: “This ruling supports the fact that Redemption is a special brand that consumers view as differentiated from Bulleit.”

‘Appropriate action’

Diageo sought more than US$21 million in damages, according to Deutsch. The court did not reward Diageo any damages, but the firm said it will take swift action to stop the sale of Redemption bottles.

A Diageo spokesperson said: “Based on this verdict, Diageo intends promptly to pursue all available legal remedies, including the entry of an injunction to halt use of any advertising, promotion or sale of the current packaging, and to require a packaging change for the accused Redemption line of products.

“Diageo takes seriously the responsibility to protect the integrity of our brands and is committed to taking appropriate action when our trademarks and trade dress are infringed upon.”

Diageo said Bulleit has had a ‘distinctive’ canteen-shaped bottle, embossed lettering, and vintage-style packaging since 1999. Diageo acquired the brand in 2001 and has since ‘dedicated significant resources’ to distribute, sell and market Bulleit.

The company said it owned the trademark for Bulleit’s packaging since 2006. Diageo noted that Redemption was originally sold for many years in a cylinder-shaped bottle but was revised in 2016 to ‘include features extremely similar’ to Bulleit.

Deutsch Family Wine & Spirits said it has a ‘strong claim that Diageo made fraudulent representations to the US Patent and Trademark Office when they originally applied for their packaging trademark registration’.

According to the firm, Redemption whiskey’s depletions grew by 23% in 2021.