Hartung Schroeder attorney, Charlie Wittmack, acts as legal counsel for the Explorers Club in Manhattan, which has filed suit against the parent of Johnnie Walker for misuse of the Club’s name.
STORY BY: Barbara Ross, New York Daily News
Johnnie Walker’s new collection of blended whiskies has to go exploring for a new name.
A Manhattan judge has ordered the whisky manufacturer Diageo to stop using the name of the prestigious The Explorers Club to brand and promote a new line of liquors sold exclusively in duty free shops in airports around the world.
“(The firm) has indisputably profited enormously,” from the use of the club’s name and images of the club’s city headquarters which, Diageo copied in advertisements and billboards, Supreme Court Justice Charles Ramos said.
The club’s attorney, Joshua Schiller, said the company has had $50 million in revenue since launching the Explorer’s Club brand in 2012. It sells its blends — The Trade Route, Spice Route, Gold Route and Royal Silk Route — for $43 to $159 per liter.
Ramos said the club warned Diageo in April 2013 that it opposed the use of the club’s trademarked name unless Diageo, like other corporations, paid for the privilege, and the parties negotiated a possible a deal.
The judge said the way Diageo used the club’s name and image was “blatant” and was intended “to deceive the public.”
Indeed, one airport sales clerk told club president Alan Nichols in a secretly recorded video that that whisky was made at the club’s headquarters on the Upper East Side.
Ramos issued an injunction that forbids Diageo from continuing to use the Explorers’ Club as a brand.
Diageo said in a statement, “We are extremely disappointed and disagree with the decision… We are awaiting official receipt of the order and are planning to seek to stay the injunction while we immediately appeal this case.”
The whisky is sold around the world and Diageo contended in part that Ramos did not have the jurisdiction as a New York judge to issue an order with worldwide impact.
Nichols said the club was “grateful” for the decision because “Diageo’s conduct directly threatens the reputation and goodwill The Explorers’ Club and its members have built over more than 100 years.”
Ramos noted that club members have been the first to explore the North and South Poles, the Mairanas trench and to set foot on the Moon. One club member currently is a finalist to be part of Mars One, a mission to put the first human colony on Mars.