Following a jury trial, the Southern District of New York has issued a permanent injunction against W.J. Deutsch & Sons Ltd. d/b/a Deutsch Family Wine & Spirits, the maker of REDEMPTION whiskey, requiring the company to redesign the packaging.
This ruling stems from a complaint filed by Diageo North America, Inc., in 2017, alleging trademark infringement, unfair competition, and dilution of Diageo’s BULLEIT brand bourbon and rye whisky. According to the Complaint, BULLEIT brand premium whiskey is one of Diageo’s flagship products, the origins of which date back to 1987, when the Bulleit Distilling Company was founded by the Bulleit family of Kentucky. Diageo is the maker of several well-known spirits including SMIRNOFF, TANQUERAY, and GUINNESS.
Diageo alleged that the trade dress of the BULLEIT bottle is unique and distinctive, with a canteen shape, embossed lettering, and an overall “vintage” look. Diageo sought an injunction against W.J. Deutsch & Sons Ltd., which sells whiskey under the brand name REDEMPTION. Diageo asserts that the REDEMPTION bottle infringes the trade dress of BULLEIT and dilutes the distinctiveness of the BULLEIT brand.
In June, a jury agreed on the dilution claims and found that the BULLEIT trademark and trade dress were valid, protectable, and famous, and that those trademark rights were violated by W.J. Deutsch & Sons Ltd.’s REDEMPTION bottle and packaging. Just this week, the Court, finding that “remedies at law” were inadequate to protect Diageo, issued a permanent injunction enjoining W.J. Deutsch & Sons Ltd. from using the infringing REDEMPTION packaging and requiring them to change the bottle and packaging to convey a substantially different commercial impression.
This case highlights that a brand is more than just a name or label but can include other distinctive aspects of product design.