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Infringement of trademark of EAGLE RARE by American EAGLE in UK


Praveen Kumar


September 22, 2021: The Court of Appeal of England and Wales recently upheld the first stage of proceeding of the decision given by the High court where the court stated: "The sign 'AMERICAN EAGLE' infringed the UK and EU trademarks of 'EAGLE RARE' both of which relate to bourbon whiskey products" and therefore, the Court of Appeal dismissed the appeal.


Brief History of 'AMERICAN EAGLE' AND 'EAGLE RARE'

EAGLE RARE is a prominent, high-quality Kentucky straight bourbon whiskey, which has been manufactured by sazerac brands since 2011.

AMERICAN EAGLE is a new brand, a Tennessee straight bourbon started in 2018 manufactured by the Halewood Group of companies.

While dismissing the appeal, Lord Justice Arnold stated that "The High court was right in finding that there is a trademark infringement on the basis of likelihood of indirect confusion. This decision that the High court has given will always be a helpful reminder of the court's approach in solving this important issue regarding likelihood of confusion in both direct and indirect causes.



In this case, the claimants 'EAGLE RARE' argued that defendants 'AMERICAN EAGLE' alleged infringing the 'EAGLE RARE' mark of whiskey products, affecting the bourbon whiskey whiskey market. The High court observed two important components of the bourbon whiskey product:

· The conditions in which the products are being purchased: Surprisingly, the court keenly observed the role of the environment in which a purchase is generally manufactured which impacts the level of attention and the potential of confusion that arises between brands. In the retail stores, the bourbon market is in some time pressure or any other limitation, but whereas on-license purchases may be in loud environments where the visual representation is frequently blurred.

· The market trends: Court carefully observed the market trends and concluded that the bourbon and whiskey markets are having different expressions of brands under the same core branding(ex., "special releases" or "single cask"), as well as releasing different products which made a direct or indirect reference to a brand name.

By considering all the above factors, the court decided that Halewood's use of 'AMERICAN EAGLE' is infringing the trademark of Sazerac's 'EAGLE RARE' and Halewood's mark was declared invalid.


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