Beyond the pale: “urban” brewers fight for name

The Federal Court of Australia recently handed down its decision in Urban Alley Brewery v La Sirène.

Urban Alley Brewery Pty Ltd (Urban Alley) is a Melbourne based craft brewer. In 2016, it successfully registered the words “Urban Ale” as a trade mark. Urban Alley then launched a new beer product under the label “Urban Ale” in 2018.

On 27 October 2016, La Sirène Pty Ltd (La Sirène) launched its own beer labelled “Farmhouse Style Urban Pale by La Sirène”. Later that year it filed a trade mark application for the words “Urban Pale”.

Urban Alley commenced proceedings against La Sirène for its use of the term “Urban Pale”, citing:

• trade mark infringement;
• passing off; and
• misleading or deceptive conduct.

La Sirène filed a cross-claim, applying to have Urban Alley’s trade mark cancelled.

The decision

The Court first dealt with the question of whether the “Urban Ale” trade mark should be cancelled.
 
A court may cancel a trade mark if it is not capable of distinguishing the owner’s goods or services. In determining whether a mark distinguishes the owner, a court will consider the extent to which “other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same mark.” ¹

For example, a court will be reluctant to allow a bank to own a trade mark for the word “finance”, as other banks will use that word in the ordinary course of their business. Therefore, it would be inappropriate to grant a monopoly over the word “finance”. 

Similarly, La Sirène submitted to the Court that the “ordinary signification” of the words “urban ale” relate to the style of the beer, being a craft beer brewed in an urban setting, and targeted at an urban audience. Accordingly, La Sirène submitted that “the words “urban ale” are not to any extent inherently adapted to distinguish the beer produced by Urban Alley from beer produced by any other brewer.”  ²

This submission was ultimately accepted by the Court.³  The Court was also assisted by evidence produced at trial demonstrating that the word “urban” was commonly used in a descriptive sense by competitors (including prior to the filing of the “Urban Ale” trade mark). 

Further, the Court accepted evidence given by a beer industry writer “that the word ‘urban’ does not have any particular significance in terms of beer style or flavour characteristics; that it is a very generic term used to describe the location of a brewery or its target audience; that it communicates the aesthetic of an inner-city brewery or describes the inner-city beer movement; and that it is a generic term that brewers use to describe their location or ground their beer marketing as being relevant to an inner-city consumer.” ⁴

Despite Urban Alley’s request that the Court exercise its discretion to allow the “Urban Ale” mark to remain on the register, the Court declined, stating that the public interest would be adversely impacted should the descriptive mark be upheld. 

As the trade mark was cancelled, consequently the infringement claim against La Sirène fell away. However, the Court made an alternative finding that La Sirène had not used the term “urban ale” as a trade mark, rather it had used the term to describe the nature and style of its beer. Accordingly, Urban Alley’s infringement claim would fail, irrespective of whether its trade mark remained on the register. 

Lavan comment

The trade mark register will not always withstand scrutiny from a court. The courts are able to affirm or cancel registrations and will consider evidence available to it in doing so. Accordingly, it is imperative that you understand the nature and extent of the protections afforded through trade mark registration. Even if you own a registered trade mark, there may be circumstances where a competitor may use your brand in a mere descriptive sense. 

Given designing and launching a new brand can be an expensive and time-consuming process, it is important that you understand the extent to which your brand is protected from unauthorised use. If competitors may fairly and honestly use your mark (or a variation of your mark), you need to reconsider. Where these issues are only identified much later, there is usually no inexpensive way to rectify the problems caused. 

Therefore, it is important to receive trade mark advice prior to committing to a new brand. If you require assistance in this area, do not hesitate to contact Iain Freeman or Andrew Sutton.