Aussie Brewer Keeps Digging Holes With Trademark Lawsuits, Now Owes Court Costs
from the stop-digging dept
If you can believe it, despite my storied fascination with the intersection of trademark law and alcohol, one battle between two Australian breweries flew under my radar. Sorry, okay? But it is worth writing about now, if only as it demonstrates the length to which some trademark protectionists will go, even when it ultimately causes that protectionist harm.
Laneway Brewery in Melbourne sued nearby La Sirene Brewing over its use of the word “Urban” in its “Urban Pale” offering. Laneway has a brew called “Once Bitter” and uses the term “Urban Ale” as its tagline, for which it had a registered trademark.
Laneway argues it has established a “substantial, exclusive and valuable reputation and goodwill” in Australia by reference to the Urban Ale trade mark.
“In addition, the Laneway Brewery products have become widely and favourably known and identified by the general public in Australia by reference to the trade mark,” the company says in documents lodged with the Federal Court.
The problems for Laneway started almost immediately. La Sirene immediately began arguing that the word “Urban” was generic in the brewing space, which, yes it is. On top of that, the use of “Urban Pale” is, in large part, descriptive of the product itself. La Sirene didn’t seek trademarks for the term for that very reason. And, if that term is too generic and descriptive in the brewing industry to warrant trademark protection, then so too is Laneway’s.
“The words ‘urban’ and ‘ale’ are in ordinary use and other persons would wish to use those words to describe beer and related products,” La Sirene argues in its cross claim.
La Sirene argues the urban ale trade mark should be cancelled, and is liable to be removed, given prior use by La Sirene and also Rockpool Dining Group (née Urban Purveyor Group Pty Ltd) on its Urban Brewing Company trade mark, registered March 2016.
And guess what? The court agreed. So, in trying to be a protectionist bully over a generic trademark it held, Laneway managed to get its own trademark cancelled as a result. Rather than admitting defeat, discontinuing the legal spend on this nonsense, and moving on… Laneway appealed. And will now have pay court costs for Las Sirene on top of it. Note in the quote below: Laneway does business currently as Urban Alley.
The notice of appeal it filed contended that the primary judge had made a mistake by cancelling the word mark, but the appeals court judges today said they were not persuaded that the primary judge had erred in his evaluation of the two marks.
Following the short hearing today, the court ruled that not only is the case to be dismissed, but Urban Alley will now have to pay for La Sirène’s legal costs.
Whoops. The only real silver lining here for Laneway is that it probably has finally found bedrock in this hole it’s kept digging for itself. Though, if any brewery were capable of finding new and creative ways to continue its quest for self-harm, I suppose it would them.