American Eagle whisky brand breached Eagle Rare trademark

The High Court has settled a trademark dispute over the sale of whisky and bourbon using the word ‘eagle’.

Sazerac Brands LLC produced and sold ‘Eagle Rare,’ a well-established, high quality Kentucky straight bourbon whisky. Their EAGLE RARE marks were registered for alcoholic beverages, spirits, whisky and bourbon.

Liverpool Gin Distillery Ltd and Halewood International Ltd were part of a company group whose CEO had conceived the “”American Eagle”” brand of Tennessee straight bourbon. Halewood sold American Eagle and Liverpool had registered AMERICAN EAGLE as a word mark for alcoholic beverages.

Sazerac contended that given the similarity between the AMERICAN EAGLE sign and the EAGLE RARE marks, and their registration for identical goods, namely bourbon whisky, there was a likelihood of confusion on the part of the UK and EU public.

It also submitted that AMERICAN EAGLE took unfair advantage of the distinctive character or repute of EAGLE RARE, which had a reputation in the UK and the EU. This was detrimental to its distinctive character. 

The court found in favour of Sazerac. It held that given the distinctive character of the EAGLE RARE marks, the average consumer who saw or heard the AMERICAN EAGLE sign would be likely to call Eagle Rare to their mind.

There was a likelihood of confusion in that a significant proportion of the relevant public would be likely to think that American Eagle and Eagle Rare were related brands. The AMERICAN EAGLE mark was, accordingly, declared invalid. 

Please contact Neil O’Callaghan or Sarah Liddiard if you would like more information about litigation and protecting your business interests.

[2020] EWHC 2424 (Ch)

(1) SAZERAC BRANDS LLC (2) SAZERAC CO INC (3) SAZERAC UK LTD v (1) LIVERPOOL GIN DISTILLERY LTD (2) HALEWOOD INTERNATIONAL LTD (3) HALEWOOD INTERNATIONAL BRANDS LTD (2020)

Ch D (Fancourt J) 10/09/2020