VODKA WARS: "STALIN IN A BOTTLE" CONFUSINGLY SIMILAR TO LEADING BRAND

In an English High Court decision last week, Mr Justice Laddie came out in support of the principle that Trade Mark Registry decisions should not be analysed to death in appellate proceedings. In AC Prodal 94 Srl v Spirits International NV Prodal applied to register two marks that consisted of labels attached to vodka bottles, their most distinctive feature being the word STALINSKAYA. Spirits, who owned the well-known trade mark STOLICHNAYA, opposed under the Trade Marks Act 1994, s. 5(2), arguing that there was a likelihood of confusion. On appeal Prodal argued that the hearing officer (i) failed to give proper consideration to the existence of other Russian-sounding vodkas that had nothing to do with Spirits' marks and (ii) wrongly assessed the conceptual and visual similarities between the marks, in that its mark had "Stalin" in the middle, while STOLICHNAYA didn't.



Laddie J dismissed Prodal's appeal, warning that an appellate court should be wary of indulging in an over-meticulous analysis of first instance judgments. In this case the hearing officer was perfectly entitled to conclude that, for most people, the existence of the name "Stalin" did not jump out and immediately give rise to a reference to a former leader of the Soviet Union. He assessed the impact of the two marks, bearing in mind imperfect recollection, and was entitled to reach his conclusion, which was a fair assessment of the visual similarity. Laddie J added that it was not the duty of the court to overturn a decision of the Trade Mark Registry simply because it had reached a conclusion it might have decided differently. It had to be demonstrated that the decision was wrong in a material way and was a significant departure from a proper assessment of the law and the facts.



The IPKat notes that, in the wake of the ECJ rulings in Gofkid and Adidas v Fitnessworld, Spirit could have obtained the same result by opposing under the Trade Marks Act s. 5(3).



More on Stalin here, here and here

Stalin and vodka here and here

Vodka cocktails here, here and here

Make your own vodka here