Transactional

'Peaky Blinders' producers lose bid to block similarly named alcohol

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REUTERS/Andrew Kelly/Illustration

  • Production co. didn't show it owned trademark in name
  • Brewery wasn't clearly likely to confuse consumers

(Reuters) - The production company that makes the British television series "Peaky Blinders" can't block the maker of "Peaky Blinder" liquor and beer from using its name for now, a Los Angeles federal court has ruled.

Caryn Mandabach Productions Ltd didn't show that it owned a protectable trademark in the name, that Sadler's Brewhouse Ltd's products were likely to cause confusion, or that the alleged confusion caused it irreparable harm, U.S. District Judge Consuelo Marshall said Wednesday, rejecting the production company's bid for a preliminary injunction.

"We are pleased with the decision, and Sadler's will continue to vigorously defend and protect its brand rights," attorney Anthony Dreyer of Skadden Arps Slate Meagher & Flom said in a Thursday email.

Mandabach and its attorney Peter Farnese of Epstein Drangel didn't immediately respond to a request for comment.

Mandabach sued Sadler's for trademark infringement in November, alleging Sadler's "Peaky Blinder" whiskey, gin, rum, and dark beer was likely to cause confusion with its show about the 19th century Birmingham, U.K., gang after which the show is named.

"Peaky Blinders" began airing in the U.K. in 2014. Sadler's, which is based in Birmingham, began selling the spirits in the U.K. in 2017, after allegedly offering to supply the beer to Mandabach for U.K. launch parties for the show in 2014 and 2016.

Sadler's applied for a U.S. trademark for the name in 2017. Mandabach sent it a warning letter in 2018, and Sadler's began selling the drinks in the U.S. through co-defendants Halewood Wines & Spirits Inc and The Winebow Group LLC in 2020.

Sadler's said it used the name because of its historical connections to the gang. The brewery said in a March filing that the gang frequented its pubs in the early 20th century, and that its former owner is a descendant of a gang member.

Marshall found Wednesday that Mandabach didn't prove it had a protectable interest in its unregistered trademarks, in part because its use of "Peaky Blinders" is "likely descriptive or suggestive of a television show regarding a group of persons named the Peaky Blinders."

Mandabach also didn't make the "clear showing" required for a preliminary injunction that Sadler's was likely to confuse consumers.

Mandabach also wouldn't be irreparably harmed without an injunction, Marshall said, noting that it waited over two years to sue and nearly three years to request an injunction after sending Sadler's the warning letter.

The case is Caryn Mandabach Productions Ltd. v. Sadler's Brewhouse Ltd., U.S. District Court for the Central District of California, No. 2:20-cv-10220.

For Mandabach: Peter Farnese of Epstein Drangel

For Sadler's: Anthony Dreyer and Jason Russell of Skadden Arps Slate Meagher & Flom

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