The 10 biggest spirits trademark battles

The business of spirits trademarking can be a hotly controversial arena, with multi-million pound infringement lawsuits launched on a regular basis.

Trademark infringement may not always be intentional, but can be costly if taken to court

In the ruthlessly competitive spirits industry, brands compete to carve themselves a niche identity in order to stand out from the crowd.

Should these brands get wind that a rival might be stealing their marketing tactics for themselves, intense legal battles ensue, putting millions of pounds and established reputations at stake.

From the big players such as Diageo, Pernod Ricard and Bacardi, to smaller companies such as a boutique gin distillery in New York and an independent Tennessee whiskey brand, the spirits industry has seen its fair share of trademark battles.

But which were been the 10 biggest, most talked about and contentious to be filed in recent years? Click through the following pages to find out.

If you think we’ve missed an obvious choice, let us know by leaving a comment below.

Jack Daniel’s vs. Popcorn Sutton’s

In October last year, Jack Daniel’s launched legal action against fellow Tennessee Whiskey brand Popcorn Sutton for its “confusingly similar” branding.

Jack Daniel’s accused Popcorn Sutton of copying its bottle style and shape after the brand switched from its mason jar bottle design to one with broad shoulders and a black label printed with a white “wild west” style font “reminiscent” of that used by Jack Daniel’s.

Jack Daniel’s Properties Inc, a subsidiary of brand owner Brown-Forman, filed the lawsuit in Nashville against defendants J&M Concepts LLC and Popcorn Sutton Distilling LLC, with a demand that the Popcorn Sutton bottles are removed from the market.

“We’ve taken action against many individuals and companies all over the world for infringing in the Jack Daniel’s trademark,” said Phil Lynch, spokesman for Brown-Forman. “We are vigorous in our defence of all our trademarks, and especially Jack Daniel’s.”

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Fireball vs. SinFire

US spirits company Sazerac sued Hood River Distillers for trademark infringement in February 2012 over the name and labelling of its cinnamon-flavoured SinFire Cinnamon Whiskey, claiming it infringed on its own cinnamon-flavoured Fireball Whiskey.

Papers filed to a court in Louisville claimed that SinFire violated Fireball’s trademark in the US.

Sazerac claimed SinFire’s label, which features a serpent-like “S” rising from fire, was too similar to its own, which features a red fire-breathing demon with a serpent-like tongue spitting a ball of fire.

However, David P. Peterson, an attorney for Hood River Distillers, said that the SinFire label would “not cause any likelihood of confusion” among customers.

Captain Morgan vs. Admiral Nelson’s

One of the most recent legal battles to be declared in the spirits world is between Diageo’s Captain Morgan rum and Heaven Hill’s Admiral Nelson’s rum.

It was revealed last month UK company Diageo had launched legal action against Admiral Nelson’s, claiming the brand was a “copycat” of its own Captain Morgan trademark.

The lawsuit, filed in the Federal Court of Canada, claimed that Admiral Nelson’s rum “infringes” and “dilutes” the Captain Morgan rum trademark, accusing Heaven Hill of “blatantly confusing trade dress”, including its use of a similar historical character in the branding of its rum.

A statement from Diageo added that this branding is “clearly intended” to mimic that of Captain Morgan in an attempt to “trade upon the brand’s goodwill and create consumer confusion”. The case is ongoing.

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Johnnie Walker vs. The Explorers’ Club

The tables turned for Diageo in March this year when the drinks giant found itself the subject of trademark infringement allegations, as opposed to dishing them out.

A real-life Explorers’ Club based in New York alleged that the group’s travel; retail exclusive Johnnie Walker Explorers’ Club Collection had adopted a “confusingly similar” title.

The club  – which which claims to have “promoted the scientific exploration of land, sea, air and space” since its inception in 1904 – issued a cease and desist letter to Diageo last spring, but negotiations have since broken down.

“Diageo’s use of the Explorers Club name is likely to deceive, and in fact already has deceived, the public into believing that Diageo’s products are affiliated with The Explorers Club,” reads the lawsuit, which is continuing.

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Brooklyn Distilling Co. vs. Breukelen Distilling Co.

New York saw the beginning of its very own boutique gin war in March 2011 when the Brooklyn Distilling Company sued the similarly sounding Breukelen Distilling Company for trademark infringement.

Owners of the Brooklyn Distilling Company, which was registered with the Federal Patent and Trademark Office first, said that since the title of the Breukelen Distilling Company was phonetically similar, it could commercially damage the company.

However, it was reported in the same month that both parties had settled the lawsuit out of court – the details of which were not disclosed.

Havana Club (Pernod Ricard) vs. Havana Club (Bacardi)

One of the most long-running spirits trademark lawsuits was launched by French drinks group Pernod Ricard in 1994 against Bermuda-based Bacardi for its same-named Havana Club rum brand.

Due to trade sanctions between the US and Cuba, Pernod Ricard cannot export its Havana Club brand to the US.

Bacardi adopted the Havana Club title, which had long been used globally by Pernod Ricard for its own Havana Club rum, for a US-based rum brand that is produced in Puerto Rico.

In March 2011, the US Court of Appeals ruled that the US Treasury Department’s Office of Foreign Assets Control was correct when it refused to let a Cuban state-owned group renew its US trademark on the Havana Club name because of a 1998 law that barred such action.

However, Bacardi was not permitted to register Havana Club as a trademark in the US. Pernod Ricard pledged to fight the overall ruling which it claims allows Bacardi to continue to “deceive” US consumers.

Pernod Ricard since registered the alternative name for Havana Club, Havanista, ready for if trade sanctions between the US and Cuba are lifted.

Buffalo Trace vs. Bison Ridge

Sazerac became involved in another copyright dispute last month when it launched legal proceedings against Crosby Lake Spirits Company for its Bison Ridge Canadian whisky, which was alleged to be “confusingly similar” to Sazerac-owned Buffalo Trace.

Lexington-based Sazerac claimed that Bison Ridge featured a number of similar packaging features to that of Buffalo Trace, including a forward-facing buffalo image on its label.

The company also claimed that Crosby Lake had intended to “pass off its own product as Sazerac’s Buffalo Trace whiskey.”

Papers filed with the US District Court of Kentucky, showed that Sazerac requested Crosby Lake Spirits to cease using the “confusing” packaging and publish corrective advertising explaining the two brands are not affiliated, and compensate Sazerac where appropriate.The case continues.

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Purity vs. Absolut

Swedish vodka brand Purity took legal action against its much larger rival Absolut in October 2012, claiming that its “Absolut Purity” slogan infringes on its own trademark and gives the impression of a “material connection” between the two brands.

Thomas Kuuttanen, one of the founders of Purity Vodka and the man who developed the luxury vodka in the early 2000s, said: “Vodka is very much about image – we understand how tempting it is for competitors to want to benefit from our success.”

Once legal proceedings began, Pernod Ricard-owned Absolut hit back at Purity, claiming that the brand should not be able to market itself as “The world’s most awarded ultra-premium vodka” and used misleading taste diagrams.

However, Purity responded by issuing a statement, claiming: “The ultra-premium segment of vodka has only been in existence for around 10 years and in this segment, the Swedish Purity Vodka has dominated with 54 gold medals and trophies at leading international spirits competitions. No other vodka has been even close to this success.”

The brand also stood buy its taste chart, stating that numerous spirits experts support it.

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Dutchcraft vs. Ketel One

Staunch copyright defender Diageo makes another appearance on this list with its lawsuit against Dutchcraft vodka.

The group launched legal action against brand owner Connecticut-based Arcadia Imports, claiming its Dutchcraft packaging “deliberately” imitated its own Ketel One Vodka brand.

Guy L. Smith, executive vice president of Diageo North America, said last week: “Ketel One is a well-established brand and Arcadia is deliberately trying to confuse consumers by packaging their vodka in a copycat bottle with imitative labelling.

“Ketel One is taking appropriate legal action and will vigorously defend its legendary bottle and label from deceptive trade practices such as these.”

For more information, click here.

Maker’s Mark vs. Jose Cuervo

In 2003, Maker’s Mark Bourbon, owned by Beam Inc, filed a lawsuit against Diageo’s Jose Cuervo over its use of a dripping red wax seal.

The Tequila brand responded by dropping its dripping wax format but counter-sued Maker’s Mark to void its trademark.

In 2012 a US Court of Appeal for the Sixth Circuit granted Maker’s Mark trademark protection for its signature red wax seal, marking an end to the nine-year lawsuit.

However, the court denied Beam’s claim for damages, ruling that Diageo had “not diluted” the Maker’s Mark trademark.