Double Jack

12 June 2019

Jack Daniel’s, the famous whiskey, does not like Jack David. Jack Daniel’s files an opposition against the European application based on taking unfair advantage / being detrimental to the reputation of the brand. The risk of confusion is invoked as the second ground.

The EUIPO first deals with the grounds of the unfair advantage. The first question is whether Jack Daniel’s is a well-known brand. You probably immediately will say “yes”, but whoever argues must prove and so Jack Daniel’s has to come up with convincing evidence. This succeeds, especially through documentation that proves the large market share and the high sales volumes.

Are the trademarks similar? An interesting question. Trademarks that are based on prenames and surnames share sometimes the prenames, that is not uncommon. But the EUIPO also sees a similarity in the last names: DA is the same. This leads to an average visual similarity.

But for the ‘freeride’ ground, there are some more hurdles. For example,  the consumer must establish a link between the trademarks. Because of the large reputation of Jack Daniel’s, the link is likely in this case, says the EUIPO.

Finally, the last question is whether the new trademark can take unfair advantage or is detrimental. According to the EUIPO, consumers will perceive the trademarks as two different people. Jack David can nevertheless be seen as a new variant. Consumers can think of Jack Daniel’s when they see Jack David from which the last trademark benefits. So, the opposition is upheld, no Jack David for spirits.

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