In February 2023, the Federal Court of Australia handed down its decision in Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66, dismissing Brick Lane’s misleading and deceptive conduct claim against Torquay and its “Better Beer” brand and design.
Brick Lane sought to protect its Sidewinder beer branding and get-up by alleging that Torquay had engaged in misleading and deceptive conduct under s 18 of the Australian Consumer Law (ACL) claiming that the branding and get-up of its “Better Beer” was deceptively similar to that of the “Sidewinder” beer.
This case should be taken as a timely reminder for companies to protect their branding and get-up by registering trademarks early, as it is difficult to safeguarding product branding and get-up by a misleading and deceptive conduct claim.
Brick Lane alleged that Torquay’s branding and get-up of its “Better Beer”, with its off-white background and blue, orange, and yellow stripes, was deceptively similar to the branding and get-up of Brick Lane’s “Sidewinder” beer.
Brick Lane argued that the similarities between the products was likely to cause consumers to mistake one beer for the other, and to be misled into believing that Better Beer was associated with Brick Lane.
Ultimately, the Court found that Torquay had not engaged in misleading or deceptive conduct and had not made any representations to indicate an association with Brick Lane.
In coming to this conclusion, Justice Stewart provides valuable insight into the scope and applicability of:
as relevant factors to establishing a s 18 ACL claim. Concluding that these factors are difficult to establish, and a s 18 ACL claim is not a reliable avenue to safeguard product branding and get-up.
Reputation
The reputation of an applicant’s product can be a relevant factor in establishing a s 18 ACL claim, however, case law prescribes that it is not necessary for an applicant to demonstrate “a particular reputation”.1 In this case, Justice Stewart considered reputation a relevant and weighty factor required to establish that consumers were deceived or mislead.
Brick Lane announced its Sidewinder beer five days before Torquay announced its Better Beer, however, Sidewinder was available for sale three months before Better Beer.
Brick Lane sought to argue that the relevant date of the alleged misleading or deceptive conduct was the date of the first sale of Better Beer, as during the three months between Better Beers announcement and first sale of beer, ‘any reputation that Brick Lane had in its relevant get-up increased considerably’.2
Justice Stewart, however, found that consumers could have been misled or deceived at the time of the Better Beer announcement, at which time, Sidewinder had only been announced five days earlier and had not yet accrued any relevant reputation for consumers to confuse the two brands. Justice Stewart observed that the two ‘products essentially built their reputation in the market side by side’.3
Importantly, Justice Stewart placed significant emphasis on the importance of reputation as a factor for the establishment of misleading or deceptive conduct. Justice Stewart’s approach in this case implies that an applicant will need to establish a reputation in its product to establish a s 18 ACL claim.
Fast moving consumer good
Consistently with current case law, Brick Lane sought to argue that beer is a fast-moving, low-cost consumer good and that ‘consumers are therefore not likely to give much attention to, or spend much time on, deciding on their purchase’.4 In quickly deciding what to purchase, consumers could easily be misled or deceived into buying the wrong beer if two beers have similar packaging.
On this point, however, Justice Stewart diverged from earlier cases and noted that it is precisely because Beer is a fast-moving consumer good and there is a huge variety of choice that the ‘hypothetical reasonable beer consumer is likely to have to pay close attention to just what it is they are taking off the shelf’.5
Justice Stewart’s approach indicates that each relevant s 18 ACL factor will be applied differently and according to the context of the industry in which it is being considered. Accordingly, businesses should be cognisant of this when considering whether to pursue a s 18 ACL to protect their product brand and get-up.
This case illustrates the difficulty in safeguarding product branding and get-up by a misleading and deceptive conduct claim. Further, it highlights that a successful s 18 ACL claim will depend on the brand’s reputation and the industry of the product.
It is a timely reminder for companies and creators to be vigilant in protecting their brands and registering trademarks for their product branding and get-up as early as possible.
In this case, although both parties applied for trademarks in late 2021, the trademark processes can take several months and neither party was the registered trademark owner of the distinctive and colourful three stripe branding. Had Brick Lane been the registered trademark owner, infringement proceedings against Torquay may have been successful, as reputation is not a factor in establishing trademark infringement.
Although trademarks may appear relatively simple, there are many technical issues that may arise which can result in loss of your registered trade mark rights.
If you require assistance or advice on registering trademarks, please do not hesitate to contact Iain Freeman or Andrew Sutton.
1 Homart Pharmaceuticals Pty Ltd v Carline Australia Pty Ltd [2018] FCAFC 105.
2 Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66, [42].
3 Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66, [2].
4 Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66, [106].
5 Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66, [107].
