Still Game creators Greg Hemphill and Ford Kiernan win legal battle with Jack Daniel's over whisky name

The creators of Still Game have won a legal battle against drinks giant Jack Daniel’s.

Ford Kiernan and Greg Hemphill, who wrote and starred in the hit comedy, launched their blended Scotch, Jack & Victor, two years ago.

The pair later applied to register the name as a trademark for whisky and other drink-related services.

But lawyers for Jack Daniel’s opposed the application, saying the name was too close to their own.

The Tennessee-based company claimed the drink, named after Still Game’s two main characters, could confuse customers and make them think they were endorsing the Scotch blend.

The firm argued the name could allow the Scottish whisky to cash in on the recognition of the well-known brand.

Hemphill, who plays the character Victor, provided evidence during the dispute while managing director Justin Welch provided evidence for Jack Daniel’s.

Hemphill said Still Game was a popular show across the UK, particularly in Scotland, arguing that “Jack and Victor” has become synonymous with the BBC programme.

The UK Intellectual Property Office said the difference between the two whisky firms were 'too great' to be confused. — The UK Intellectual Property Office said the difference between the two whisky firms were ‘too great’ to be confused. iStock

The UK Intellectual Property Office (UKIPO), which rules on trademark disputes, found in favour of the Scottish firm, allowing the trademark to proceed with registration.

UKIPO trademark hearing officer Heather Harrison said the difference between the two firms were “too great” for them to be confused.

Jack Daniel’s was ordered to pay £3,200 to Jack and Victor Limited, the company used to market the whisky.

In her ruling, Ms Harrison wrote: “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.”

She added: “The differences between ‘Jack and 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.”