Daniel Alexander QC and Maxwell Keay acted for the respondents, Sazerac, in this unsuccessful appeal against a finding that the appellant, Halewood, had infringed Sazerac’s trade marks. Sazerac owns two trade marks consisting of the words EAGLE RARE in respect of whisky in class 33. Halewood had launched a Tennessee straight bourbon whiskey under the sign AMERICAN EAGLE.
Mr Justice Fancourt had held in  EWHC 2424 (Ch) that Halewood’s use of the sign AMERICAN EAGLE gave rise to a likelihood of indirect confusion for infringement purposes. In this appeal, Halewood argued that Fancourt J had erred in principle in his application of the principle of contextual assessment of the use of the sign complained of, and in his finding that there was a likelihood of indirect confusion. It was argued that the reasons given by the judge for concluding that there was no likelihood of direct confusion should equally have led him to conclude that there was no likelihood of indirect confusion.
Lord Justice Arnold gave the judgment of the court, with which Lady Justice Elisabeth Laing and Lord Justice Birss agreed. It did not follow from a finding that there was no likelihood of direct confusion that the judge should have concluded that there was no likelihood of indirect confusion; they are different species of confusion. The judge had not erred in taking evidence into account which was strictly speaking inadmissible, and which had been elicited by Halewood in cross-examination, in circumstances where the judge referred to it only as an illustration of how an average consumer may react to similar brand names. On the evidence and his findings of fact the judge was entitled to conclude that some consumers of bourbon confronted with AMERICAN EAGLE would be likely to believe that it was a related brand to EAGLE RARE, and was right to infer that there was a likelihood of some consumers thinking that EAGLE RARE was a special version of AMERICAN EAGLE. Halewood’s arguments were rejected and its appeal was dismissed.