Jack Daniel's loses trademark dispute

Aug 15, 2023

Two comedians who named their Scotch whisky after their on-screen characters have won a trademark dispute against Jack Daniel's.

Greg Hemphill and Ford Kiernan launched their whisky Jack & Victor in 2021, named after their characters in the BBC Scotland sitcom Still Game.

The UK Intellectual Property Office (UKIPO) ruled in favour of Jack & Victor, and said the trademark application could proceed to registration.

Tennessee whiskey brand Jack Daniel's, owned by Brown-Forman, has trademarked the terms ‘Jack’ and ‘Gentleman Jack’ in the UK.

The American whiskey argued Jack & Victor could mislead consumers into thinking it was endorsed by the brand, and that Jack and Victor would benefit from its global reputation.

Hemphill said the popularity of Still Game, which aired its ninth series in 2019, meant the names ‘Jack’ and ‘Victor’ had become synonymous with the characters, and that there was no evidence the duo would take advantage of Jack Daniel's reputation.

In writing, Heather Harrison, the comptroller-general, ruled: "There will be no misrepresentation. The differences between ‘Jack & Victor’ and ‘Jack Daniel's’ are too great for the relevant public to believe that the contested goods are those of the opponent, despite the strong reputation of the earlier sign, even for identical goods."

Jack Daniel's has been ordered to pay £3,200 (US$3,958) to Jack & Victor to cover the costs of the hearing.

Hemphill said: "We are pleased with this ruling and that common sense has prevailed."

The Spirits Business has reached out to Brown-Forman for comments.

Earlier this year, a trademark battle between Jack Daniel's and VIP Products over a parody dog toy was heard in the Supreme Court.

The whiskey brand argued the Bad Spaniel's Old No.2 toy, a replica of the whiskey bottle, would tarnish the whiskey brand with its ‘juvenile bathroom humour’.

The whiskey brand's original bottling features a label that reads ‘40% ABV’. The Bad Spaniel's toy reads ‘40% Poo by Vol’ and ‘100% Smelly’.