The owners of the rights to the name Russian Vodka are suing the British alcohol producer Halewood

The Russian structure of the British alcohol producer Halewood has faced a series of lawsuits due to the use of the Russian Vodka designation on product packaging. The owners of the rights to such an appellation of origin (AO) FKP Soyuzplodoimport and GC Rust are trying to recover compensation. Despite the aggravation of the geopolitical situation, this designation provides a competitive advantage, experts and manufacturers say.

On June 30, FKP Soyuzplodoimport, which owns the Stolichnaya, Moskovskaya, Russkaya alcoholic brands, filed a lawsuit with the Arbitration Court of St. Petersburg and the Leningrad Region against the structure of the British alcohol producer Halewood LLC J. J. Whitley Distillery, ” follows from the filing cabinet. Soyuzplodoimport explained to Kommersant that the lawsuit is related to compensation for the illegal use of the Russian Vodka or Russian Vodka NMPT and the similarity with the Russkaya trademark, the rights to which belong to the FKP. The amount of requirements for “J.J. Whitley Distillery” – 49.9 million rubles.

Halewood Artisanal Spirits produces gin, rum, vodka under the brands Whitley Neil, J. J. Whitley, Berkshire, Dead Man’s Fingers and others. Since 2019, Halewood has owned a distillery in the Leningrad region. In Halewood and “J. J. Whitley Distillery “” Kommersant” did not answer.

Compensation of 6.7 million rubles. for the use of NMPT “Russian Vodka” with “J. J. Whitley Distillery” may also require the structure of a large vodka producer Rust Group (“Russian Standard”, “Green Mark”, etc.), follows from the filing cabinet. At the end of April, the Arbitration Court of St. Petersburg and the Leningrad Region attracted 17 more companies with rights to AOPs to the case by third parties. Among them are the structures of the Beluga Group, Tatspirtprom, the Alcoholic Siberian Group, and Ladoga. Rust Group did not provide any comments.

“J. J. Whitley Distillery branded Russian Vodka on batches of vodka, including under the Red Square brand, for export to the UK. This follows from the materials of the court, which in 2022 considered the application of the Baltic Customs to hold the company liable. But the customs requirements were refused. Patent Attorney, Managing Partner of Zuykov & Partners Sergey Zuykov explains that the courts did not consider the export of goods using a designation similar to a trademark and an appellation of origin as a violation. The conclusion is “rather debatable”, but when considering the FKP’s claim, the court may take into account the found absence of a violation, he says.

Ksenia Kasyanenko, a lawyer for the Regionservice Collegium, says that the FKP will need to prove a violation of rights expressed in an offer for sale or sale of homogeneous goods with a designation identical or confusingly similar to the AO. According to her, other copyright holders can also demand compensation. Vasily Zuev, head of intellectual property practice at Intellectual Capital, adds that the courts can reduce the disproportionate amount of compensation.

“J. J. Whitley Distillery tried to obtain the right to use the Russian Vodka appellation of origin, but Rospatent refused to register. In June of this year, the company filed a lawsuit in the Intellectual Property Court challenging the decision. Veniamin Grabar, President of Ladoga, says that obtaining and confirming the right to use the Russian Vodka AO requires a lot of work, resources and adherence to certain technologies. Ladoga supports the need for strict observance of the right to use AOs. According to Mr. Grabar, the range of export markets has shrunk, but the right to use AO remains an advantage. Stanislav Kaufman, the owner of the Kaufman brand agency, confirms that the designation “Russian Vodka” makes it possible to compete better, including in foreign markets, despite the complication of the geopolitical situation.

Anatoly Kostyrev