A trade mark that distinguishes one trader’s goods from another is a valuable asset, however a recent Federal Court case concerning craft beer has demonstrated that registered trade marks are not always protected from cancellation in a trade mark dispute.

In the case of Urban Alley Brewery Pty Ltd v La Siréne Pty Ltd [2020] FCAFC 186, Urban Alley Brewery’s appeal was dismissed and their trade mark “Urban Ale” was cancelled under section 88(1)(a) of the Trade Marks Act 1995 (Cth). This was an important case which determined that a trade mark registration must be cancelled or rejected if it is deceptively similar to another registered trade mark.

Facts

• Urban Alley was a craft brewery in Melbourne which produced a beer product called “Urban Ale”.
• La Siréne also operated as a craft brewery in Melbourne and produced a beer product under a similar name “Urban Pale”.
• La Siréne first sought orders to cancel the Urban Alley’s registered trade mark under the Trade Marks Act 1995 (Cth) s 88(1)(a).

Significance of the Case

This case demonstrated the importance of adopting a trade mark which is sufficiently distinctive from other existing trade marks and ahead of prevailing trends.

A trade mark must be capable of distinguishing an applicant’s goods or services. It was found that Urban Ale was not “inherently adapted” to be capable of distinguishing its beers from those of other producers. This decision was based on evidence that the term “urban” was commonly associated within the industry with beer products and breweries.

The court considered the following factors:

• The term “urban” is not significant regarding the beer style or flavour, and has been used by numerous Australian businesses, including in La Siréne’s “urban pale” without improper motive. Instead it is used to describe the location of the brewery, as used by many other traders and journalists.
• The terms “urban” and “ale” were descriptive of the goods (beer) and should be interpreted with their common meaning.
• Urban Alley could not produce sufficient evidence that they had established a reputation based on the “urban ale” trade mark.

Therefore, the key terms of Urban Alley’s trade mark had become descriptive as a result of prevailing trends, causing Urban Alley’s trade mark to be deemed invalid for lack of distinctiveness and deceptive similarity.

The Test for Deceptive Similarity

The relevant test for deceptive similarity is to compare a trade mark and the recollected impression retained of another previously registered trade mark. A side by side comparison of trade marks may not convey the same meaning or idea, however, they may when imperfectly recalled under this test. Furthermore, the trademark must be viewed in its entirety, unlike the substantially identical test which requires the examination of individual trade mark elements.

Etheringtons Solicitors can assist you with enforcing your trade mark

Etheringtons Solicitors can advise you throughout the development and adoption of your trade mark to ensure that it is distinguishable from other goods and services and to avoid future trade mark disputes.

We can assist you with registering a trade mark in Australia and advise on whether your trade mark includes any descriptive qualities which could affect its validity. We may advise you consider securing other versions of trade marks which have the potential to cause a challenge risk.

If you need further advice or assistance regarding trademarks or other intellectual property matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.