Re: Irish Distillers Association
We are intellectual property attorneys for Irish Distillers Limited (“IDL”), the international renowned distillers, engaged in the distilling, distribution and sale of some of the premium brands of Irish whiskey and spirits, including Jameson and Powers. IDL also are engaged in tourism and run distillery tours both in Dublin and Cork, enhancing the level of notoriety and recognition in their name.
The company name Irish Distillers Limited was registered on 5th May 1966, and has been used since at least 1970, and has become known to, and is recognised by, the consumer in the abbreviated form IRISH DISTILLERS. This name has a long history of use and is an established brand name both in Ireland and globally. IDL holds clear common laws rights in the name IRISH DISTILLERS, through the extensive use and promotion of their brands, their trading activities, and their prominent standing in distilling world class spirits.
IDL became aware of your use of the name Irish Distillers Association and wrote to you regarding their concerns at the adoption of a name which would clearly lead to confusion in the mind of the consumer and would lead to the activities undertaken under the name Irish Distillers Association being confused with or association with IDL. The consumer would believe that there is a connection with IDL where none exists, or that IDL authorised the use of the term IRISH DISTILLERS by your association, when no such authorisation was furnished.
Your response to our client dated 30th June 2020, fails to properly consider the issues raised, and dismissed the genuine concerns of our client without merit.
You have claimed that the term Irish Distillers Association is generic and descriptive. The manner in which you use the name on your website https://irishdistillersassociation.ie/ highlights and places emphasis on the term IRISH DISTILLERS, with the word
“Association” placed underneath this term as a minor aspect of the name. This manner of use can only be considered an attempt to trade off the goodwill of our client or to lead the consumer to believe that that there is an association with our client where none exists.
Our client has used the trade mark IRISH DISTILLERS for such a significant period of time that the term has acquired a distinctive character in the mind of the public, and is one now associated with our client, and is no longer a term that would be considered generic in the context of Irish whiskey in particular, but also Irish spirits.
Your association could have chosen any name which did not conflict with our client’s trade mark, but rather chose a name which emphasis the term IRISH DISTILLERS, and which can only lead to the assumption that you were aware of nature of your actions and deliberately adopted this name to trade off the reputation of our client.
Despite your contention that your activities are not in competition with those undertaken by our client under the trade mark IRISH DISTILLERS, both names are used in the field of distilling. Our client is engaged in the promotion and development of Irish whiskey and Irish spirits, being the principal distillery in Ireland, producing and selling some of the world’s best known whiskey and spirt brands. Your actions would clearly conflict with the activities of our client, leading to an obvious risk that the services you are providing or intend to provide being passed off as or mistaken for those of our client.
It is also noted from your website that you claim to be a registered lobbyist in Dublin and Brussels. A search of the Standards in Public Office Lobbyist Register, as established under the Regulation of Lobbying Act 2015, does not list your association, so that it must be assumed that the claims made on your website are false.
Your actions in adopting the name IRISH DISTILLERS ASSOCIATION, and the manner in which you use the name, placing emphasis on the term IRISH DISTILLERS, is unjustified and will lead to the services you are offering, being passed off as those of our client and will cause damage to the reputation and goodwill of our client. Our client is not prepared to accept this and demands that within a period of two weeks from the date of this letter that you provide the following undertakings in writing.
1. Acknowledge the establish rights held by IDL in the trade mark IRISH DISTILLERS;
2. Immediately cease all use of the name IRISH DISTILLERS ASSOCIATION;
3. Not to use the term IRISH DISTILLERS on its own or in combination with other elements, or any colourable imitation or variation thereof which would lead to confusion with the trade mark IRISH DISTILLERS;
4. Amend the website https://irishdistillersassociation.ie/ to remove any reference to the term IRISH DISTILLERS and not to include in the website, in a trade mark context, the term IRISH DISTILLERS or any colourable imitation or variation thereof which would lead to confusion with the trade mark IRISH DISTILLERS;
5. To surrender the domain name irishdistillersassociation.ie and undertake not to register a domain name which includes the term IRISH DISTILLERS or any colourable imitation or variation thereof which would lead to confusion with the trade mark IRISH DISTILLERS;
6. Not to seek to register as a trade mark, company name or business name, a name containing the mark IRISH DISTILLERS or any colourable imitation or variation thereof which would lead to confusion with the trade mark IRISH DISTILLERS;
7. To delete the Twitter account @DistillersAssoc, associated with Irish Distillers Association;
8. To remove reference to the name Irish Distillers Association or any use of the mark IRISH DISTILLERS or any colourable imitation or variation thereof which would lead to confusion with the trade mark IRISH DISTILLERS, from all forms of marketing, promotion and advertising whether through printed media, online media, including websites, and social media, including, but not limited to, Facebook, Twitter, Instagram, LinkedIn.
We request the above undertakings in writing no later than 30th July 2020, failing which our client reserves the right to take further action, up to and including litigation, without notice, against the infringement of their intellectual property rights.
Tomkins & Co.