14 August 2014

Is it a whisky drink or a club?


Explorers Club, Inc. v Diageo plc

Over the past 18 months or so, if you have been in an airport departure lounge you would no doubt have seen a huge range of alcohol bottles in the duty free shops and JOHNNIE WALKER is almost certainly one of the whisky brands with its distinctive EXPLORERS CLUB COLLECTION label.

The Explorers Club, an exclusive New York club that counts Neil Armstrong and Theodore Roosevelt among its former members, has made it clear that the name Johnnie Walker is not and probably will never be, on its register.

Diageo plc’s JOHNNIE WALKER EXPLORERS' CLUB, a range of the blended Scotch whisky sold in duty free shops, profited from an unsanctioned association with the Club, which was founded in 1904, of the same name.

Diageo must now stop using the Explorers Club brand name after the New York Supreme Court granted a permanent injunction. Diageo said it would appeal the ruling.

The decision brings to a close this 16-month wrangle between a huge world famous drinks giant and a small but prominent society for genuine explorers.

A final order, which will include the scope of the injunction, has yet to be issued.

The dispute started in 2013 when The Explorers Club, founded in 1904, filed a civil lawsuit against Diageo claiming the name was confusingly similar.

It also alleged the whisky’s label, as well as the layout of airport kiosks where it was sold, were modelled on the décor of the actual Explorers Club.

In a judgment issued on August 4 at the Supreme Court of the State of New York, Judge Ramos agreed saying “It is clear that Diageo’s adoption of the name of the Explorers Club was for the purpose of leading the public to believe that it was connected or affiliated with the club,”. He added that Diageo had “indisputably profited enormously from the purported unlawful and disputed use of the club’s name, to the tune of approximately US$50 million in sales”.

A spokesperson for Diageo, which also owns brands including Guinness, Smirnoff and Captain Morgan, said it was extremely disappointed but planned to seek permission to stay the injunction while it appealed against the ruling.

As Judge Ramos pointed out, “Other than the fact that Johnnie Walker seems to walk with large boots on, I'm not aware of him climbing Mount Everest”.

Alan Nichols, President of The Explorers Club, said "Diageo could have approached the club about a mutually beneficial working relationship before deciding to launch a worldwide marketing campaign using the club's name and reputation to sell its JOHNNIE WALKER product. The club is an organisation with chapters all over the world that regularly carries on activities with responsible corporations that support the club's non-profit mission. Diageo's conduct directly threatens the reputation and goodwill the Explorers Club and its members have built over more than 100 years. We look forward to enforcing the injunction worldwide in the interests of justice and ending Diageo's unauthorized misuse of the club's name, our history, and renowned reputation."

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