Diageo wins injunction over Bulleit lookalike
Diageo has been granted an injunction to stop the sale of Redemption whiskey after it was found to dilute the Bulleit 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.
In June 2022, Diageo said it would seek an injunction to prevent the sale of Redemption whiskey after a jury said the Bulleit trademark is ‘valid and protectable’, with Deutsch’s Redemption packaging diluting the Diageo-owned bottle.
However, the ruling concluded that Deutsch’s Redemption packaging did 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.
Diageo also sought more than US$21 million in damages, but the court did not reward the company any compensation.
In a new court filing on 7 September, a New York federal judge sided with Diageo and issued an injunction against Redemption, banning the advertising, promotion and sale of the brand in its current flask-shaped packaging.
According to Deutsch Family Wine & Spirits, this move applies to the future and distributors and retailers may continue to sell all of their current inventory of Redemption.
The company has also been ordered to change Redemption’s bottle and packaging.
In the lawsuit, Deutsch said it would be ‘irreparably crippled’ by the injunction order, which would cause the company to lose approximately US$33m in annual revenue.
The Redemption whiskey owner has now filed a motion to suspend the injunction order.
Peter Deutsch, CEO of Deutsch Family Wine & Spirits, said: “The jury verdict issued in June 2022 supported the fact that Redemption is a special brand that consumers view as differentiated from Bulleit.
“We believe the injunction that was issued is not supported by the jury verdict and have already filed a motion to stay the injunction order pending the outcome of our appeal.”
A Diageo spokesperson said: “We are pleased that the court has issued a permanent injunction that directs Deutsche to stop diluting the iconic Bulleit trademark.”
According to Diageo, 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.