A Scottish whiskey provider has taken on the giant and won, after Tennessee based Jack Daniels sought to block the use of the word ‘Jack’.
Greg Hemphill and Ford Kiernan, who are a comedy duo from the Scottish sitcom Still Game, have created a Scottish whiskey product called ‘Jack and Victor’ after their characters.
Jack Daniels sought to oppose their UK trade mark application, citing their own ‘Jack’ trade marks, also registered for whiskey.
It was Jack Daniels position that by allowing the application to proceed to registration would allow the pair to mislead customers and benefit from their global reputation.
The UK Intellectual Property Office considered by sides and decided that the opposition should not be successful. Due to the reputation of the characters and the show they come from, the UKIPO confirmed that there would not be any advantage by the Jack and Victor whiskey and therefore the differences between the marks were sufficient to mean there is no likelihood of confusion.
After losing the case, Jack Daniel’s was ordered to pay £3,200 in costs to Jack and Victor Limited, the company used by Hemphill and Kiernan to market their product.
Their trade mark will now proceed to registration and will be registered for 10 years.
If you would like to discuss how to protect your brand, then please get in touch with the team today.
