STILL Game creators Greg Hemphill and Ford Kiernan have won a legal battle with Jack Daniel's over a whisky named after their beloved characters Jack and Victor.
The comedy duo launched a blended Scotch called Jack & Victor two years ago in honour of their pensioner alter egos in the hit BBC sitcom and it has proven a hit with fans.
They applied to register 'Jack & Victor' as a trademark for whisky and other drinks-related services to protect their brand.
However, lawyers for American whiskey giant Jack Daniel's opposed the application and said the name was too similar to their own.
The US firm claimed the Still Game whisky could mislead customers into thinking it was endorsed by them and said it would allow Hemphill and Kiernan to cash in on the worldwide fame of the Tennessee whiskey.
The UK Intellectual Property Office (UKIPO), who rule on trademark disputes, has now found in favour of "Jack & Victor" and said the trademark can proceed to registration.
Both sides hired lawyers for a hearing at which Hemphill and Justin Welch, the managing director at Jack Daniel's, gave evidence.
Hemphill, 53, explained the popularity of Still Game, particularly in Scotland, and said the names Jack and Victor had become synonymous with it.
The UKIPO said the differences between the two brands were "too great" for there to be any confusion and found there was no evidence Hemphill and Kiernan were attempting to take advantage of Jack Daniel's reputation.
In a written ruling, UKIPO trademark hearing officer Heather Harrison said: "The opponent’s pleaded case is that the relevant public will believe that the contested mark is used by the opponent or by a party economically connected with or endorsed by the opponent.
"It further claims that use of the contested mark would constitute free-riding by the applicant on the reputation of the opponent.
"The first part of this pleading relies on the average consumer mistakenly believing that there is a trade connection between the users of the respective marks.
"Consequently, it is predicated on the existence of a likelihood of confusion, which is something that I have dismissed whether on the basis of the marks individually or as a family.
"Having reached that conclusion, I am bound to dismiss the first limb of the unfair advantage claim.
"As to free-riding, the evidence does not establish that there was any subjective intention to take unfair advantage.
"On the contrary, Mr Hemphill has given unchallenged evidence which explains in detail that the contested mark consists of the names of the protagonists in the Still Game television programme.
"That programme first aired between 2002 and 2007, returning to UK television for a further run of episodes between 2016 and 2019, to some renown, at least in Scotland."
She added: "The differences between 'Jack & Victor' and 'Jack Daniel's' are too great for the relevant public to believe that the contested goods are those of the opponent, despite the strong reputation of the earlier sign, even for identical goods.
"Similarly, although 'Jack' is replicated in the later mark, it has a lesser reputation and the relevant public is unlikely to be deceived into thinking that use of the combination 'Jack & Victor' indicates that the goods are those of the opponent.
"Any similarity attributed to the use of 'Jack' in the opponent’s marks, singly or as a group, will not result in the mistaken belief that the contested mark is a further development of the opponent’s brands."
After losing the case, Jack Daniel's were ordered to pay £3200 in costs to Jack and Victor Limited, the company used by Hemphill and Kiernan to market their product.
Jack Daniel's has registered trademarks in the UK for terms including "Jack Daniel's", "Jack" and "Gentleman Jack".
Still Game became a comedy phenomenon after making its TV debut in 2002.
When it returned in 2016 after a nine-year hiatus, it became the most-watched TV programme in over a decade in Scotland.
Jack Daniel's declined to comment on the case. Jack and Victor Limited has been approached for comment.
