“ 13. … American whiskey comprises about 10% of the total UK retail market in whisky products. About 90% of that 10% share is attributable to sales by the best known manufacturers of American whiskey, Jack Daniels and Jim Beam. (Strictly, Jack Daniels is not a bourbon because its cereals mash does not include at least 51% corn, but not because it is made in Tennessee rather than Kentucky: a bourbon can be made in any US state, though the majority of it is made in Kentucky.) The vast majority of the US whiskey sales in the UK are at a ‘value’ or ‘entry’ level, or for ‘mass market’ purchase, priced in supermarkets in the region of£14 to£18 a 70 cl bottle. There are also supermarket ‘own brands’ competing at the same level at a more competitive price. The experts agreed that that leaves a small share of the American whiskey market divided between at least two further categories, which Mr Allanson called the ‘middle ground’ and ‘premium’ bourbons, and which Mr Stephenson called ‘premium’ and ‘super premium’. Despite the different names used, they were talking about the same categories, priced respectively at between£20 and£30 + and between£30 + and about£50 a bottle. There is arguably also a tiny top tier of very exclusive, ultra premium products retailing at much higher prices. … 15. The total volume of US whiskey sold in the UK in 2018 and 2019 was around 1.4 million 9-litre cases annually, worth about£650 million . Between about 1.2 and 1.3 million cases are Jack Daniels and Jim Beam mass market products. After allowing for other mass market products, it can therefore be seen that the sales volumes for premium and super premium brands are quite low. Within that space, certain better known brands (Maker’s Mark, Bulleit, Wild Turkey and Woodford Reserve) occupy much of the ground. … ”
“7. … Eagle Rare is a well-established, high quality Kentucky straight bourbon whiskey …. It was first made in 2001 and is marketed in two expressions of the brand, a 10-year old version and a 17-year old version. The 10-year old is made only in limited quantities and is available in the UK only ‘on allocation’ (i.e. the amount for sale in the UK depends on the amount released each year and allocated to the UK by Sazerac) and it is sold only in limited outlets in the UK. The 17-year old is very scarce indeed and much sought after by cognoscenti of aged bourbon. The RRP of the 10-year old is around£35 for a 70 cl bottle and the RRP of the 17-year old is in the region of£120 for a 70 cl bottle, when available at all in the UK. 8. American Eagle as a brand was conceived by Mr Stewart Hainsworth, the CEO of the Halewood Group ….. The Second Defendant now sells the brand in three expressions: a 4 year old, an 8 year old and a 12 year old version. Each is a Tennessee straight bourbon. The 12 year old was launched in late February 2019 at about£65 for a 70 cl bottle, though the price has since been reduced, and it was only released in small quantities. … The 4 year old was released in September 2019 at around£25 a bottle, in larger quantities. The 8 year old version has only very recently been released, in limited quantities at around£40 a bottle. Both these prices have been reduced somewhat in recent times in order to promote the brand. 9. Up to June 2020, 75% of American Eagle bourbon sold by the Second Defendant was the 4 year old version. …. … 24. … the high quality upper middle and premium parts of the bourbon market are relatively underpopulated by brands in the UK and EU markets. These brands are set comfortably above the mass market brands though the increase in price is not so steep as to deter lower level drinkers from experimenting on occasions with the quality brands. Eagle Rare 17 year old is on a much higher level with few if any peers. American Eagle 8 year old will be a direct competitor with Eagle Rare 10 year old, with American Eagle 12 year old at a slightly higher and considerably more expensive level. The 4 year old version is a little lower in price and will compete both with mass market brands and to some extent with the middle or upper-middle level products such as Eagle Rare. The volume of sales through multiples to which the Defendants aspire will be far in excess of sales and exposure of Eagle Rare. As a result, in time, more consumers of bourbon whiskey would become aware of American Eagle than are aware of Eagle Rare.”
“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”
“In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.”
“16. Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning - it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It therefore requires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: ‘The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark’. 17. Instances where one may expect the average consumer to reach such a conclusion tend to fall into one or more of three categories: (a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right (‘26 RED TESCO’ would no doubt be such a case). (b) where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as ‘LITE’, ‘EXPRESS’, ‘WORLDWIDE’, ‘MINI’ etc.). (c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension (‘FAT FACE’ to ‘BRAT FACE’ for example).”
“53. … Asked whether consumers were well-used to distinguishing between brands with similar names, he agreed that they were if they remembered the names. Asked to comment on whether a consumer would assume that Yellow Rose whiskey came from Four Roses, Mr Allanson said that they would, unless they were able to examine the labels with the specialist knowledge that he had. He said that there was potential for confusion with the Heaven Hill and Heaven’s Door brands in the US. But he agreed that the consumer in the premium sector would take care to distinguish between brands. … 56. I accept Mr Allanson’s evidence that (were all the brands available in the UK and EU) the average consumer would be likely to be confused about the identity or provenance of Four Roses and Yellow Rose, and Heaven Hill and Heaven’s Door. That evidence was given as an instinctive reaction to questions; it was convincingly given and had a ring of truth to it. Although the names are different, a non-specialist would be likely to assume that there was some link between them, judging by their names.”
“59. The mark Eagle Rare self-evidently comprises two separate words, one of which is a strong substantive and the other an adjective, in the nature of a qualification or description. That is not to treat the mark as if it were Eagle rather than Eagle Rare but only to observe that the average consumer would regard the word Eagle as the more distinctive component and the word Rare as relating to the quality of the product. Use of ‘rare’ in this way is common in the aged spirits market and would be recognised as such by the average consumer of bourbon. The words ‘Eagle Rare’ would not in my judgment be read by the average consumer as describing or referring to a rare species of eagle, e.g. a golden eagle. 60. The sign American Eagle is similar in that it includes the word ‘Eagle’, though as the second rather than the lead term, and in that Eagle is qualified by an adjective, ‘American’. The word American is also strong, much stronger than "Rare", so that the sign would more naturally be read as a composite whole. That is because the two words are more naturally linked than the words Eagle and Rare, when read in that order. The word ‘American’ has additional visibility because it comes first. I reject the Claimants’ argument that ‘American’ is weak because it does no more than state the obvious, viz that bourbon is an American product. There is nevertheless similarity in visual terms, given that the substantive Eagle appears in both mark and sign as a strong component. 61. Conceptually, the sign American Eagle conjures up an image distinct from something or anything American and an eagle: it conjures up an image of a bald eagle, a particular type of eagle native to North America and an iconic symbol (and the national bird) of the United States of America. I therefore consider that, conceptually, the trade mark and the sign are distinct and not strongly similar.”
“The Defendants are using the sign in the context of the bourbon whiskey market in the UK and EU. The sign is used on bottles of whiskey that are sold in retail outlets, in bars, clubs and restaurants and online - exactly the same market in which Eagle Rare is sold. I am not persuaded that there is any other context or circumstances that are material.”
“ Evidence was given by Mr Stephenson and Mr Hainsworth about the concept of brand extensions in the whisky and bourbon markets. Neither of the expert witnesses addressed this issue in their reports, but brand extensions and the likelihood of indirect confusion were not what they were specifically asked to give their opinions about. Their expert opinions were sought on the nature of the bourbon market in the UK, the habits of UK bourbon drinkers and the position of Eagle Rare and American Eagle within that market. Mr Stephenson (with whom Mr Hainsworth and Mr Bradbury, an employee of the Second Defendant, agreed) said that it was a very common pattern in the whisky and bourbon market to have many different expressions under the same branding, including plays on the brand name. The examples of Jack Daniels producing Gentleman Jack and Winter Jack and [The] Famous Grouse producing The Snow Grouse and [The] Black Grouse were put to Mr Stephenson, who agreed that they were examples of this pattern. In re-examination, Mr Stephenson said that a collection of expressions might have different age statements, and the bottle shape generally stayed much the same, though perhaps with different labelling, and ‘obviously the name of the brand will still be there’. American Eagle bottles do not of course use the name Eagle Rare anywhere on the bottle. ”
“71. I find that it is both common and well-known in the spirits market in the UK and the EU, including their respective bourbon sub-markets, for producers not only to have different expressions of brands (i.e. different age statements or special releases or ‘single cask’ products, and the like) but also to release different products with different names, that may or may not allude directly or indirectly to another brand, which are made in the same distillery, by the same distiller or by a distiller in the same group as (or licensed by) the originating distiller. Mr Stephenson very readily accepted in cross-examination in general terms that this was so. He did refer to the presence of the senior brand name on the bottle somewhere, but he was answering a question about how different expressions of the same brand were presented and doing so by reference to actual examples of this in the documentary evidence. I did not take his comment to be to the effect that all sub-brands or connected brands include on the label a reference to the main brand. In any event, the average consumer would not have that expectation or scrutinise the label to ascertain whether any link was to be found. 72. There was no evidence of any actual confusion of a consumer of American Eagle, though this is not wholly surprising given the novelty, low-key launch and limited release to date of that brand, and further given the fact that Mr Bradbury had not instructed his sales team to inquire into and report on any incidents of confusion between American Eagle and Eagle Rare specifically. It is not uncommon in such cases for there to be little hard evidence of actual confusion. In those circumstances, the Claimants must satisfy me that it is inherently likely that such confusion will arise. 73. I consider that there is a likelihood of a significant proportion of the bourbon markets in the UK and EU being confused about whether Eagle Rare and American Eagle are connected brands. It is common for connected brands to have similar names: see the examples given in para 69 above. The average consumer would be aware of the fact that brands have different expressions and connected products, and that distillers can make more than one brand. It is natural to consider, as Mr Allanson did when presented for the first time with ‘Yellow Rose’ and ‘Heaven’s Door’, that there was a connection with the ‘Four Roses’ and ‘Heaven Hill’ brands. He had not heard of the smaller brands, so he approached this question in the same way that an average consumer would, though he accepted that with scrutiny of the label and using his expertise the difference could be established. 74. The position with Eagle Rare and American Eagle is similar, in that prior to American Eagle's launch there was no other bourbon in the relevant market using the name ‘Eagle’ as part of its brand name. It is a distinctive component of the brand name. Another identical product in the same market with ‘Eagle’ in its name would not only call Eagle Rare to mind but would be likely to cause the average consumer to assume that they were connected in some way. That is so even though American Eagle has a strong composite identity, because of the presence of the word ‘Eagle’. I do not consider that the fact that American Eagle is Tennessee bourbon rather than Kentucky bourbon makes any difference, since the average consumer will not have this distinction in mind, and even if they did it would not negate the possibility of an economic link between the respective undertakings. It goes only to support the conclusion that the products would not mistakenly be thought to be the same. 75. Confusion is more likely when a trade mark is distinctive. The test is whether that association between the mark and the sign creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings. I consider that there is such a risk because the product is identical, the names have marked similarity - indicative of a possible connection between them - and because the existence of connected brands using similar names is well-known to the public. In particular, once American Eagle 4 year old is established and becomes more widely known than Eagle Rare, having been positioned by the Defendants to compete with Jack Daniels and the like in the mass market, it will be natural for a consumer to assume that Eagle Rare is a special version of American Eagle.”