Pernod and Diageo vs. White Rock Distilleries: Trademark Infringement Suits
Wine & Spirits Daily has recently reported that both Pernod Ricard and Diageo have issued complaints against White Rock Distilleries for trademark infringement on their brands, Malibu Rum and Smirnoff Vodka, respectively. WSD reported on August 20 that:
Pernod Ricard USA filed a trademark infringement suit against White Rock Distilleries in the Southern District Court of New York in late March. Pernod alleges that White Rock knowingly fashioned its Barbarossa and Jack flavored rum bottles to look like Malibu Rum.
In its complaint, Pernod states that the “defendant has embarked on an unlawful campaign to lure consumers into purchasing its fruit-flavored rums under the mistaken belief that its rums come from, are sponsored by, or are associated or affiliated with, the MALIBU® brand.” They claim White Rock deliberately copied the opague white color of Malibu’s bottle along with its “tropical beach theme and palm tree motif.” To view a picture of the Barbarossa and Jack bottles, click here.
Pernod also alleges that White Rock imitated Malibu’s website by showing “a lush tropical island in the distance.” Lastly, Pernod accuses the defendant of encouraging retailers “to place the Infringing Products directly in the middle of long rows of the signature, white MALIBU® rum bottles on store shelves, with the intent to confuse consumers,” according to its complaint…
In its response, White Rock denied all allegations brought forth by Pernod. It summed everything up by stating: “The use of white bottles, depictions of palm trees and nautical and beach themed designs, both stylized and realistic, is common in the flavored rum industry and unlikely to cause confusion among consumers.” White Rock also claims it “was the first to use certain elements of the claimed trade dress on certain products.”
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On August 25, WSD went on to report that:
Diageo is joining the likes of Pernod Ricard USA in issuing a complaint to White Rock Distilleries for trademark infringement. This time, though, it’s concerning Smirnoff Vodka in the Southern District of Florida. Diageo alleges that the label of White Rock’s Orloff Vodka was made to resemble Smirnoff’s classic red and silver color scheme. In the complaint, Diageo states that “‘the Classic Smirnoff Trade Dress’ has achieved secondary meaning among relevant consumers, in that it serves as a source-identifying trademark of Diageo’s Smirnoff vodka products. As evidence of its secondary meaning…Smirnoff 21, is often referred to as ‘Smirnoff Red.'” Diageo also uses other color schemes in connection with its flavored vodka products, such as yellow and silver for “Citrus” and green and silver for “Green Apple.” Diageo has also trademarked its “various shield designs” in connection with Smirnoff and its flavors.
In 2006 Diageo said it “became aware that Defendant was distributing, marketing, offering for sale, and selling bottles of vodka” at various retailers in Florida “that bear confusingly similar imitations” of Smirnoff’s flagship brand and flavor extensions.
Diageo claims that its counsel contacted White Rock’s counsel, who assured the company that “the infringing designs” were merely being test marketed in a limited number of stores in Florida and that it would soon be pulled off shelves. However, Diageo claims that it later discovered that the defendant was advertising the “vodka bearing the infringing designs” on its website, and again selling the vodka in Florida. Like Pernod, Diageo is also accusing White Rock of placing Orloff Vodka in the same shelf space next to Smirnoff to confuse customers.
Click here for more information on the Wine & Spirits Daily reports on the Pernod Ricard and Diageo Tradmark Infringement complaints.
Click here for more information on White Rock Distilleries
Click here for mroe information on Malibu Rum
Click here for more information on Smirnoff Vodka
