A US Federal Court has ordered a halt to the sale and production of a line of fruit-flavored rums whose bottles were alleged to be “confusingly similar” to the flavored rum – Malibu.

The order, issued by the US District Court for the Southern District of New York, upheld a lawsuit filed in March 2009 by Pernod Ricard USA.  The suit successfully claimed that White Rock Distilleries had engaged in “trade dress infringement and…deceptive acts and practices” by marketing its line of Barbarossa, Baroca and Jack flavored rums in opaque white bottles that have become synonymous with Malibu rum.

As part of a settlement of the litigation, White Rock acknowledged “the validity and strength of the Malibu Trade Dress, including but not limited to the white color of the bottle.”  Accordingly, White Rock consented to entry by the Court of a permanent injunction banning White Rock from manufacturing, marketing or selling its flavored rums, or any other distilled spirit, in “a white bottle” or “in any bottle using a palm tree and sun design that is substantially similar to the Malibu palm tree and sun logo.”  The Court also ordered White Rock to pay legal fees incurred by Pernod Ricard USA in connection with the dispute.

Thomas Lalla, Senior Vice President and General Counsel at Pernod Ricard USA, said the company needed to ensure that consumers were “not lured into purchasing White Rock’s fruit-flavored rums under the mistaken belief that they come from or are associated with the Malibu brand.  The white bottle is the signature design element of the Malibu trade dress, and we will be very aggressive in protecting it,” Lalla said.

Pernod Ricard USA was represented in the lawsuit by Debevoise & Plimpton LLP.

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