Halewood loses ‘eagle’ trademark spat

UK-based Halewood International has lost a trademark battle against Sazerac over its use of the word ‘eagle’ for its Bourbon brand.

Whitley Neill owner Halewood International was hit with a lawsuit from New Orleans-headquartered Sazerac for its alleged infringement of two trademarks in the UK and EU for the word 'eagle.’ Both trademarks were filed in 2018 for use in whisky and alcoholic beverages (excluding beer), and spirits. Halewood moved into the Bourbon category in May 2019 with the launch of its American Eagle brand, which is made at an unnamed family-owned distillery in Tennessee. It was initially launched as a 12-year-old whiskey, followed by four-year-old and eight-year-old expressions. Sazerac owns the Eagle Rare Bourbon brand, which is made at its Buffalo Trace distillery in Frankfort, Kentucky. It was first released in 2001 and consists of a 10-year-old and 17-year-old. The 10-year-old Bourbon is made only in limited quantities while the 17-year-old is very rare, the lawsuit said. The allegations of the trademark infringement were made on the grounds of the similarity between the American Eagle and Eagle Rare trademarks in relation to the use of Bourbon and a likelihood of confusion for UK and EU consumers. In addition, the lawsuit was filed due to American Eagle taking "unfair advantage” of Eagle Rare’s reputation and distinct character. In a ruling on 10 September in the High Court, judge Justice Timothy Fancourt considered there is a risk that the public might be confused between the two brands. Fancourt said: “I consider that there is such a risk because the product is identical, the names have marked similarity – indicative of a possible connection between them – and because the existence of connected brands using similar names is well known to the public.” The judge also noted that if the four-year-old American Eagle becomes “established and more widely known than Eagle Rare” then it would be “natural for a consumer to assume that Eagle Rare is a special version of American Eagle”. 'Impulsive' approach Fancourt also noted that Stewart Hainsworth, CEO of Halewood Artisanal Spirits, is “by nature innovative and an opportunist when it comes to branding of goods and somewhat impulsive in his approach to ‘banking’ possible brand names”. Fancourt pointed to Halewood’s trademark battle in December 2019 against Vera Lynn over the company’s plans to launch a gin under the late English singer's name. The tribunal hearing ruled in favour of Lynn after her lawyers had argued that the firm had not asked for permission to use her name. The court said this move was also an intentional attempt to benefit from Lynn’s name and reputation. The court heard how Hainsworth had chosen the name for the Bourbon after he saw a branch of the American Eagle clothing store while on a business trip to Thailand in June 2018. Following the trip, Hainsworth searched on the trademark register for ‘American Eagle’ and after finding one expired result he immediately registered the words. The judge found that Hainsworth nor his attorney had searched for any other names. In addition, the court said Hainsworth was also aware of a previous lawsuit between Sazerac and Irish whiskey producer West Cork Distillers over a trademark for 'Skibbereen Eagle'. Halewood previously owned a majority stake in West Cork Distillers. A settlement was reached between the two companies, allowing West Cork to only make Irish whiskey under the name. The court said that Hainsworth was "well aware" of the Eagle Rare brand and did know that the claimants would be likely to challenge American Eagle over a risk of confusion or taking unfair advantage, or both. As such, the court ruled in favour of Sazerac. A date will be set later to decide any compensation. A Sazerac spokeswoman said: “We are very pleased by the court’s ruling in favour of our Eagle Rare Bourbon trademark. Eagle Rare is an iconic, award-winning Bourbon produced by Sazerac, one of the oldest family-owned distilling companies in the United States. “We have spent much time and effort building Eagle Rare Bourbon’s stellar reputation and this outcome reflects Sazerac’s commitment to vigorously protecting our trademarked assets.” A Halewood spokesperson said: “We don’t agree with the findings, and are assessing our options.”