US – Diageo has been granted a permanent injunction to stop the sale of Redemption whiskey by Deutsch Family Wine & Spirits after it was found to dilute the Bulleit trademark.
Diageo initially sued Deutsch Family Wine & Spirits in 2017 over the redesign of Redemption whiskey, claiming the bottle has been ‘revised to closely mimic’ its Bourbon and rye whiskey brand, Bulleit.
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.
Bulleit Bourbon is a brand of Kentucky straight bourbon whiskey produced at the Bulleit Distillery in Lebanon, Kentucky, and the Bulleit Distillery in Shelbyville, Kentucky.
In 2001, Diageo acquired various Seagram assets, including the Bulleit brand, which was then produced by its subsidiary Kirin Brewing Company at the same Lawrenceburg plant, bringing the brand into its ownership.
The multinational beverage alcohol company later owned the trademark for Bulleit’s packaging in 2006 and has since ‘dedicated significant resources to distribute, sell and market Bulleit including opening a new US$115million, 300-acres Bulleit distillery in Kentucky.
The company noted that the brand is bottled at 45% abv (90 proof) for the US, Canadian, British, Dutch, and Mexican markets while for Australian and Danish markets, it is bottled at 40% abv. It is also sold in Germany, Norway, and Sweden.
In June 2022, Diageo said it would seek an injunction to prevent the sale of Redemption whiskey after a jury said the Bulleit trademark is ‘valid and protectable’, with Deutsch’s Redemption packaging diluting the Diageo-owned bottle.
However, the ruling concluded that Deutsch’s Redemption packaging did not infringe on the Bulleit trademark by creating consumer confusion.
The jury also rejected Diageo’s allegation that Deutsch acted in bad faith when designing its Redemption bottle.
Diageo also sought more than US$21 million in damages, but the court did not reward the company with any compensation.
In this new ruling, a New York federal judge has ruled in favor of Diageo and issued an injunction against Redemption, banning the advertising, promotion, and sale of the brand in its current flask-shaped packaging.
The court has also ordered Deutsch Family Wine & Spirits to rebrand its Redemption bottle and packaging.
In the lawsuit, Deutsch said it would be ‘irreparably crippled’ by the injunction order, which would cause the company to lose approximately US$33m in annual revenue.
The Stamford-based marketer of wines commented that this move applies to the future and distributors and retailers may continue to sell all of their current inventory of Redemption.
The Redemption whiskey owner has now filed a petition to suspend the injunction order.
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