May 25, 2023

Whisky Business

The stars of Scottish sitcom Still Game have emerged victorious in their trade mark dispute against liquor heavyweight Jack Daniel’s.

Ford Kiernan and Greg Hemphill, who both wrote and starred in the hit series, launched their own blended Scotch whisky ‘Jack & Victor’ in 2021 in honour of their much beloved on-screen personas. The duo then applied to register the name as a trade mark for whisky and other drink-related goods and services shortly after.

Lawyers for Jack Daniels opposed the application on the grounds that the name was too akin to their own and would cause confusion among consumers. They suggested that the name could cause customers to believe that they were endorsing the Scotch blend and would allow the pair to cash in on the back of the established goodwill and renown of the Tennessee-based brand.

Hemphill provided evidence during the dispute, while managing director Justin Welch provided evidence for Jack Daniel’s. Hemphill claimed that Still Game was a popular show across the UK (especially in Scotland) and that ‘Jack and Victor’ has become synonymous with the show.

The UK Intellectual Property Office (UKIPO) dismissed the opposition and allowed the trade mark to proceed to registration. Further, Jack Daniel’s was ordered to pay a sum of £3,200 to Jack and Victor Limited, the company set up by Hemphill and Kiernan to market the product.

The hearing officer for the UKIPO concluded ““The differences between ‘Jack and Victor’ and ‘Jack Daniel’s’ are too great for the relevant public to believe that the contested goods are those of the opponent, despite the strong reputation of the earlier sign, even for identical goods.”

Following the decision, Hemphill said "We are pleased with this ruling and that common sense has prevailed”. Jack Daniel’s declined to comment on the matter.

If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.

in: EU/International, Legal News, News, Trade Marks

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