Diageo PLC, the world’s largest spirits maker and owner of the Johnnie Walker whiskey brand, plans to roll out a whiskey brand called Jane Walker in the USA.

This is the latest plan by the company to attract female drinkers. The Jane Walker whiskey will go on sale this month with a revamped Johnnie Walker logo which has been created to include a woman in boots, tipping her hat in mid stride.

Well-known brand names cannot be changed or adapted by 3rd parties (infringer) to attract customers to their newly created business. Some simple examples could be if a 3rd party (infringer) had to use or register names like Tammy Hilfiger, Michelle Kors, Camilla Klein etc.

This name adaptation (e.g. Michelle Kors) is a common law wrong and is known as “passing off”. A member of the public would be confused into believing that the two brand names (Michael Kors vs Michelle Kors) are connected, which is not the case.

It is perfectly acceptable for an existing owner of a trade mark or business name to make an adaption to their trade mark, as in the case of Jane Walker whiskey to attract female customers. It is not acceptable and a contravention of law if a 3rd party does it.

We have assisted a number of our clients with protecting their brand name from being abused.

Moore Attorneys, South Africa’s IP Law Firm of the Year 2017, has recently been appointed to handle the Southern African Intellectual Property Portfolio for the world’s largest producer of spirits, Diageo. The British multi-national company owns brands such as Johnnie Walker, Smirnoff, Baileys and Guinness.

Founded in 2002, Moore Attorneys is a leading, international Intellectual Property law firm with key specialisations in trademarks and brand protection.