This case is a reminder of just how difficult it is to succeed in a claim for passing off in “copycat packaging” proceedings. Although this decision relates only to an interim application, the indication from the judge was that, in his view, consumers would not actually be deceived by the “copycat packaging” and that, although there might be some confusion, with consumers wondering whether there was a link between the products, that was not the same as deception and was not enough to prove passing off.

Facts

Au Vodka Ltd applied for an interim injunction against NE10 Vodka Ltd to restrain the marketing and sale of NE10’s newly launched range of NE10 vodkas. Au Vodka claimed passing off, based on the allegedly deceptively similar get-up of NE10’s vodka to the get-up used by Au Vodka. The rival bottles of plain vodka look like this:

Au Vodka launched in 2015 with the original unflavoured vodka as a premium brand. In 2019/2020 it launched a range of flavoured vodkas, packaged as follows (the black vertical centre line is a reflection, not present in reality):

NE10 Vodka Ltd was incorporated in September 2021. NE10’s flavoured vodkas are packaged as follows:

Decision

Passing off

Mr Justice Mellor noted at the outset that, generally, the proprietor of a bottle shape tends not to trust the bottle shape to indicate origin, as demonstrated by the fact that it will add distinctive word marks to the bottle’s label. It is these word marks that serve to indicate origin, at least until many years of use have been built up. Further, consumers generally do not make assumptions about the origin of products based on the shape of goods alone.

The evidence showed that Au Vodka had very significant revenue and engaged in very substantial marketing activity, which was more than sufficient to sustain a claim to substantial reputation and goodwill in the UK. Further, the Au Vodka bottles featured very heavily in all its marketing. There was therefore no doubt that Au Vodka had a reputation. The big question was what that reputation resided in. Although this was a matter to be decided at trial, it was nonetheless necessary to form a view at this stage.

The key consideration was what would be in the mind of the consumer who had encountered the vodka bottles.

Notwithstanding the consistent gold appearance of Au Vodka’s bottles and some references on its website to “gold”, Mellor J thought it striking that, in the evidence of how Au Vodka’s product was referred to by third parties in newspaper articles and on social media, Au Vodka’s product was consistently referred to by its name, “Au vodka”, and not “the gold vodka” or “the one in the gold bottle”.

Overall, therefore, Mellor concluded that the most significant feature of Au Vodka’s product was not the bottle shape or the fact that it was metallic gold, but the name “Au”.

As for misrepresentation, Mellor J noted that any misrepresentation must be “operative”, i.e. a causative factor in the decision to purchase NE10 vodka, and that there was an important distinction between deception, which is a causative factor in the decision to purchase, and mere confusion, which does not lead to a sale.

Au Vodka submitted evidence of what it said was actual deception, including social media messages from customers noticing the similarities between the products and asking whether there was a link between them. However, in Mellor J’s view, none of these customers were actually deceived into thinking N10’s vodka was that of Au Vodka. The evidence simply showed consumers wondering whether there was a connection instead of actually believing there was one.

Au Vodka also said that NE10 must have copied the Au Vodka bottle and get-up. Further, it said that NE10 choosing to use an element with its atomic number could not be a coincidence and that NE10’s behaviour showed an intention to copy and to trade off Au Vodka’s reputation and goodwill.

Mellor J said that the process by which NE10 had arrived at its product was irrelevant. What mattered was the effect that the resulting product had on prospective purchasers. Even if Mellor J proceeded on the assumption that NE10 had copied, that did not get Au Vodka home, nor did it show that NE10 intended to trade off Au Vodka’s reputation, as there is a difference between a defendant that has chosen to “live dangerously”, i.e. has appreciated the risk of confusion and has tried to use a sign that is a safe distance away, and a defendant that intends to cause deception and deliberately tries to take the benefit of another trader’s goodwill (see Specsavers v Asda [2012] EWCA Civ 24). Given this was an interim application, it was too early to draw any conclusion, but the evidence before the court at this stage of proceedings did not support the claim that NE10 intended to deceive.

Overall, in Mellor J’s view, consumers that knew of Au Vodka’s product would notice the distinct similarity in the shape and dimensions of the bottles, but these would be outweighed by the different names and the fact that none of NE10’s bottles were gold. However, there was plainly a serious issue to be tried on passing off.

American Cyanamid principles

Mellor J found that the case clearly warranted a speedy trial and directed it to be heard in January 2023.

On the question of whether damages would be an adequate remedy for Au Vodka if no interim injunction were granted, although he could not rule out there being a few instances of deception between now and trial, Mellor J said that the effect would be small. Therefore, he considered that the effects of any deception pending trial would be largely remedied by an injunction granted at trial and damages.

Mellor J also found that damages would not be an adequate remedy for NE10 if an interim injunction were granted and NE10 subsequently won at trial, because: (i) its range of products had already been launched; (ii) all momentum in getting its business going would be lost; and (iii) it was unrealistic to suggest that NE10 could simply put its business on hold until trial. Further, if NE10 won at trial, Au Vodka would then know that NE10 was about to re-launch its product and would try to disrupt NE10’s marketing efforts. In Mellor J’s view, it would be difficult to quantify the damage suffered if this were to happen.

Mellor J also found that the balance of convenience fell in NE10’s favour, as the grant of an injunction would threaten the viability of its vodka business. Au Vodka argued that the balance swung the other way because NE10 had only made very few sales so far and the number of outlets where its product was available was also small, as was the number of bottles available. Mellor J disagreed. The fact was that NE10’s product had been launched and was on the market.

Given this finding, the status quo issue did not arise.

Accordingly, Mellor J declined to grant an interim injunction. He did say, however, that although the evidence of actual confusion relied upon by Au Vodka was inconclusive at this stage, the fact that NE10 had won at interim application did not mean that it would necessarily win at trial. Much would depend on what happened in the lead up to trial and the evidence submitted at trial. (Au Vodka Ltd v NE10 Vodka Ltd [2022] EWHC 2371 (Ch) (21 September 2022) — to read the judgment in full, click here).