V&S Vin & Spirit, the owners of vodka brand Absolut, have brought an action against Absolute Radio, the rebranded Virgin Radio, for passing off and trademark infringement. Frances Vickery savours the Absolut brand and considers V&S’s prospects of success.
Who: V&S Vin&Spirit and Absolute Radio International
When: October 2008
Law stated as at: 22 October 2008
Drinks company V&S Vin&Spirit ("V&S"), owner of the vodka brand Absolut, has issued a writ against Absolute Radio International (the management company for Absolute Radio) for infringement of its trademark and "passing off" its services as those of V&S.
V&S want Absolute Radio to stop using the name and to cancel the registration of the trademark ‘Absolute Radio’.
In a statement issued by the radio station, its spokesperson has said that they will defend the action and are confident that they will win.
Virgin Radio was acquired by a consortium (including Times of India) in June 2008. As part of the acquisition agreement, there was an obligation on the new owners of the station to rebrand, as the Virgin mark reverted to Richard Branson.
V&S felt that there was a risk of confusion between the Absolut brand and the rebranded Absolute Radio and that listeners to the station could think that the station was owned by V&S.
This caused particular concern to V&S because it felt that Absolute Radio “targets a wider and younger audience than Absolut” and that “consumers may perceive this as undue advertising to young people who are not of legal drinking age, which goes against the efforts of Absolut vodka as a responsible spirits brand”.
So, do V&S have a leg to stand on in their action for passing off? Absolute Radio argue that the two brands are completeley different, theirs being an entertainment brand and V&S’s a vodka brand.
To be successful in a passing off claim, V&S would have to show that they had goodwill in the Absolut brand, that there was a misrepresentation made by Absolute Radio that leads to confusion and that V&S suffers damage as a result (which could be damage to reputation).
There is more to the Absolut brand than meets the eye – delve a little deeper and it seems their marketing tactics have taken the brand beyond the iconic vodka bottle and vodka infusions for which it is predominantly recognised.
In the past, V&S has teamed up with high-profile fashion designers in its advertising campaigns, such as Gucci, Versace and Jean-Paul Gaultier and in doing so has created the Absolut Fasion brand. In 1998, V&S launched its Absolut DJ website and in 1999, Absolut Jam, a global jam from four cities that was sent in real time over the internet. Further, V&S has have created Absolut Tracks, a project where musicians were briefed to make a musical interpretation of the bottle and the brand.
The format of some of Absolute Radio’s advertising could strengthen V&S’s claim for passing off. In one advert, a plane marked ‘airline’ shows passengers disembarking and gathering in the shape of a bottle similar to the Absolut bottle with the words ‘Absolut Return’, presumably to signify listeners returning to the station.
Given the spelling of the words in the advert, V&S appear to have at least an argument that there was misrepresentation by Absolute Radio.
As set out above, V&S are concerned about the damage to reputation if the public consider they are advertising irresponsibly.
Where a similar sign is used for products or services that are identical, similar or dissimilar and the sign is detrimental to, or takes unfair advantage of the distinctive character or reputation in an existing mark, an action can be brought for trademark infringement.
In the writ issued by V&S, they are attempting to force Absolute Radio International to revoke its trademarking of the name Absolute Radio.
Even though the primary brand of Absolut is vodka which is dissimilar to radio broadcasting, V&S could still argue under the UK legislation, that the mark Absolute Radio takes unfair advantage of the reputation in the Absolut mark.
Furthermore, as discussed above, the Absolut brand extends beyond just vodka and the services claimed in the Absolut Tracks registration overlap with the radio broadcasting service offered by Absolute Radio which could strengthen V&S’s claim.
Why this matters:
When launching a product or re-branding, companies should think carefully about how other companies with similar products/services advertise and market their brands and consider whether they could be making unfair use of the other company’s reputation.
We will track the progress of this case and report future developments on the marketinglaw.co.uk website.