UK-based Halewood International has been given the green light to appeal the High Court’s trademark ruling in favour of Sazerac over the use of the word ‘eagle’ for its Bourbon.
Last month, Whitley Neill owner Halewood International lost a trademark battle against US drinks firm Sazerac for its alleged infringement of two trademarks in the UK and EU for the word ‘eagle.’
Halewood moved into the Bourbon category in May 2019 with the launch of its American Eagle brand. New Orleans-headquartered Sazerac owns the Eagle Rare Bourbon brand, which was first released in 2001 and is made at the firm’s Buffalo Trace distillery in Frankfort, Kentucky.
Sazerac filed the lawsuit on the grounds of the similarity between the two brands and a likelihood of confusion for UK and EU consumers. In addition, the claim 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.
After the court ruled in favour of Sazerac, Halewood said it was evaluating its options.
On Wednesday 28 October, Halewood said it had obtained approval for an appeal from the High Court in an online hearing.
During the hearing, the judge heard arguments from both sides as to whether Halewood’s appeal would succeed. According to Halewood, Fancourt said the plea had a “real prospect of success” and gave permission for it to go forward to the Court of Appeal.
The company’s CEO, Stewart Hainsworth, said: “While we fully respect and acknowledge the trial judgment of Mr Justice Fancourt, we did not agree with parts of it. We are also pleased and grateful to the judge for his rulings yesterday that our appeal has a real chance.”
The court has also lifted the ban on American Eagle until the result of the appeal, allowing Halewood to continue selling, supplying and marketing the Bourbon brand. Halewood said it hopes and expects the appeal to be successful.
A Sazerac spokesperson said: “Sazerac will continue to vigorously protect its trademarked assets. We have spent much time and effort building Eagle Rare Bourbon’s stellar reputation and we will continue to defend it and our other trademarks to the furthest extent possible.”
The appeal is expected to take place in mid-2021 at the earliest.