A Trade Mark Storm is Brewing in Melbourne
In a noble move to enrich Australia’s cultural and historical legacy, boutique brewer Thunder Road Brewing is looking to revive many of Australia’s heritage beer brands, including Brisbane Bitter, Cairns Draught and Ballarat Bitter. However, their plans have gone slightly a-rye, as Carlton United Breweries (CUB) currently holds trade mark rights in the historic labels. Before the pints can be pulled, Thunder Road Brewery must have approximately 60 trade marks removed from the trade mark register. The company is seeking to have CUB’s trade marks revoked on the basis that they are no longer used by the brewing giant, a point vigorously contested by CUB.
Image: Quinn Dombrowski
And so the parties have hopped off to court. The bitter dispute was heard by a delegate of the Registrar of trade marks at IP Australia in Melbourne during April this year.
Under the Trade Mark Act 1995 (Cth), a trade mark may be removed from the register where there has been no use, or no use in good faith, of the trade mark for 3 years (an application cannot be made until after 5 years have passed from the original filing date). Any person can apply to have a trade mark removed from the register, provided they are willing to pay the application fees involved, thought to be approximately $13,000 in this instance. The opponent then bears the thirsty task of either demonstrating the necessary use or satisfying IP Australia that circumstances had prevented use, but that registration should continue.
This trade mark war may be likened to a bar room brawl. During the hearing, CUB argued that they had not abandoned the trade marks, pointing to the release of commercial batches of the heritage beers from time to time, which were sold in pubs and through outlets such as Woolworths and Dan Murphy’s. Thunder Road suggested that these releases were not genuine use of the marks, but merely a sham to retain the trade marks.
Ultimately the decision rests with IP Australia, which has a broad discretion and will consider each mark on a case by case basis. In addition to actual use, the delegate will look at factors such as residual reputation in the market. Even if Thunder Road legitimately gains use of the trade marks, consumers may still associate some or all of the labels with CUB. If the use of the labels by Thunder Road suggests an association or connection between Thunder Road and CUB where no such connection exists, there may be an infringement of the Australian Consumer Law (ACL) (now at schedule 2 of the Competition and Consumer Act 2010 (Cth)) and passing off under common law.
IP Australia’s decision is likely to be handed down in approximately 3 months time. For stubby trade mark holders, this case is a timely reminder that you should:
- sit back, crack open a cold one and take a good look at your trade mark portfolio;
- ensure that you are using your trade marks. Remember, such use must be use ‘as a trade mark’ to distinguish your goods or services from those of other traders; and
- have another beer.
Cheers!