Still in the game – lessons in surviving a trade mark opposition

You may or may not have come across the very popular sitcom Still Game however, if you haven’t, I can assure that most people in Scotland have. Unfortunately Jack Daniel’s, the US whiskey giant, don’t appear to be viewers as they opposed a UK trade mark application for JACK & VICTOR filed by the show’s two leading actors in respect of, amongst other goods/services, whisky.

The trade mark applicants Greg Hemphill and Ford Kiernan created their JACK & VICTOR whiskey brand in 2021 following the success of Still Game (the brand is named after their two characters on the show). They applied for their UK trade mark in March of that year but were subsequently opposed by Jack Daniel’s on three grounds. First, that the application was likely to be confused with earlier trade marks owned by Jack Daniel’s (for example JACK and GENTLEMAN JACK). Second that the application, if granted, would take unfair advantage of, or free ride on, the reputation enjoyed by Jack Daniel’s. And third that the application would amount to passing off.

Ultimately all three of these grounds were dismissed by the UK Intellectual Property Office, and largely for the same reason.

In respect of the likelihood of confusion argument, the UKIPO found the marks in issue were simply not similar enough. Marks are assessed on a visual, aural and conceptual basis and, if they are insufficiently similar it will lead to a finding of no likelihood of confusion (even if the relevant goods are identical).

With regards to free riding, for this ground to have worked, Jack Daniel’s would have still needed a finding that the marks were similar, and given that this wasn’t the view of the UKIPO, this ground also failed.

Finally with regards to passing off; this is predicated on establishing goodwill, misrepresentation and damage. Clearly Jack Daniel’s enjoys goodwill but the misrepresentation hurdle was too high to be overcome (really what the UKIPO would be looking for would be some form of deception, which clearly wasn’t present in this case) and so, this also failed.

Briffa comment

This case is a good reminder that large conglomerates don’t always get their way and the UKIPO’s opposition process can be a better leveller than the court. It allows parties to have a serious, a sometimes complicated, legal discussions without “breaking the bank” and it means that David can stand up to Goliath if the law is on his side. In this case it was, and Jack Daniel’s was rightly ordered to pay the £3,200 in legal costs to the applicants and, of course, their trade mark was allowed to proceed to registration.

If you would like to discuss a potential trade mark opposition with one of our expert solicitors, please do not hesitate to email info@briffa.com to arrange a consultation meeting.