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Still Game whisky wins Jack Daniel's trade mark war

Taken from | Author: BBC | Date: 24 May 2023

The comedy duo who named a Scotch blend after their most famous characters have won a trade mark battle with US whiskey giant Jack Daniel's.

Greg Hemphill and Ford Kiernan launched Jack and Victor in 2021 in honour of the Still Game pensioners.

The popular BBC Scotland sitcom aired its ninth and final series in 2019.

The UK Intellectual Property Office (UKIPO) found in favour of Jack and Victor and said the trade mark could proceed to registration.

Hemphill and Kiernan had applied to register Jack and Victor as a trade mark for whisky and other drinks-related services but Jack Daniel's lawyers opposed the application.

Jack Daniel's, a Tennessee whiskey, has registered trade marks in the UK for terms including "Jack" and "Gentleman Jack".

A hearing at UKIPO, which rules on trade mark disputes, heard evidence from Hemphill and Justin Welch, the managing director at Jack Daniel's.

The US company claimed the Still Game whisky could mislead customers into thinking it was endorsed by them and said it would allow Hemphill and Kiernan to benefit from its global reputation.

Hemphill, 53, explained the popularity of Still Game, particularly in Scotland, and said the names Jack and Victor had become synonymous with it.

The UKIPO said the differences between the two brands were "too great" for there to be any confusion and found there was no evidence Hemphill and Kiernan were attempting to take advantage of Jack Daniel's reputation.

The Jack and Victor whisky, which comes from Loch Lomond Distillery, costs about 30% more than the US brand.

While both bottles have a black label, the Scotch branding includes a gold text and silhouette image of the eponymous septuagenarians.

In a written ruling, UKIPO trade mark hearing officer Heather Harrison said: "The opponent's pleaded case is that the relevant public will believe that the contested mark is used by the opponent or by a party economically connected with or endorsed by the opponent.

"It further claims that use of the contested mark would constitute free-riding by the applicant on the reputation of the opponent."

She dismissed the "likelihood of confusion" for the average consumer and said Still Game had been televised "to some renown, at least in Scotland".

She added: "As to free-riding, the evidence does not establish that there was any subjective intention to take unfair advantage."

After losing the case, Jack Daniel's was ordered to pay £3,200 in costs to Jack and Victor Limited, the company used by Hemphill and Kiernan to market their product.

Still Game became a comedy phenomenon after making its TV debut in 2002.

When it returned in 2016 after a nine-year hiatus, it became Scotland's most-watched TV programme in over a decade, attracting more than half of the viewing audience.

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

Jack Daniel's declined to comment on the case.

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