New Zealand: When is a trade mark not a trade mark? – When it is a descriptive or generic term like radler

Last Updated: 12 July 2011
Article by Ben Cain

On 4-6 May 2011, before Assistant Commissioner Jones of the Intellectual Property Office of New Zealand, the Society of Beer Advocates (SOBA) sought to invalidate or revoke DB Breweries' (DB) trade mark registration for the word 'radler'.

In short, SOBA argued that at the date on which DB filed its application to register 'radler' in 2003, 'radler' was a descriptive term for a shandy-style drink. Alternatively, SOBA argued that 'radler' has become a common name for such a style. DB of course opposed and denied both arguments. The Assistant Commissioner's decision is imminent, expected by mid-July. 

Regardless of the outcome, the radler case highlights the need for marketers, branding professionals and business owners to avoid choosing and registering (if successful) descriptive or generic names as trade marks for goods or services. Avoiding descriptive or generic names may save the costs of defending trade mark registrations from invalidation orrevocation - as DB has found out to its expense, win or lose.

The danger of descriptive or generic brand names

Descriptive or generic brand names are those which describe, for example, the kind, quality, intended purpose, value, geographical origin, or some other characteristic of a product or service.  In other words, a descriptive or generic name is one that is in common use by the public to describe a product or service.

Descriptive or generic brand names are very attractive to marketers, for example, because they are easy for consumers to grasp and remember. I know; I speak from experience having been a professional marketer for 15 years prior to becoming an IP lawyer. In that time, I was involved both on client-side and agency-side in the development of a large number of trade marks for products and services across a wide variety of industries.

In terms of legal rights, descriptive and generic brand names make weak trade marks. The more descriptive or generic a brand name, the harder it is to protect and enforce any rights in that name, and the less chance a trade mark owner has in claiming its particular mark is distinctive of its products or services.

A distinctive name is the key

The fundamental purpose of a brand name is to make one trader's goods or services stand out in the crowd from competitors'. This purpose is reflected in trade mark law in that to qualify as a trade mark under the Trade Marks Act 2002 a name must be capable of distinguishing one trader's goods from another. If other traders are likely to want to use that  name in connection with their own goods or services, registration of that name as a trade mark should be refused.
 
Unfortunately, due to human fallibility, a descriptive or generic name occasionally gets through the cracks in the system and is registered as a trade mark, resulting in an unfair monopoly to the trade mark owner.

Radler - SOBA argued - is one such trade mark since it is the well-known name for a style of low-alcohol beer, in the same way pilsner, black beer, and pale ale are all well-known names for styles of full strength beer. As a consequence of DB's monopoly over the use of the word radler, no other trader can use radler to describe a radler beer in New Zealand.  Not surprisingly this has left a bitter after-taste in many brewers', beer-lovers' and consumers' mouths.

What to do when developing or choosing a brand name

When developing or choosing a brand name for a product or service, marketers and branding professionals would be advised to:

1. NOT choose a descriptive or generic name that other traders are likely to want to use in the course of trade. Involve your James & Wells trade mark attorney from the outset to avoid doing so;

2. CONSULT your James & Wells trade mark attorney so he/she can advise you on (a) the strength of your proposed brand name as a trade mark; and (b) whether your proposed brand name may infringe someone else's trade mark rights; and

3. ASK your James & Wells trade mark attorney to apply to register your brand name. A trade mark registration is a valuable business asset which can be bought, sold, assigned or licenced like any business asset so it makes perfect sense to register it.

If you would like to discuss this article further, please contact Ben Cain in our Litigation team or contact one of our trade mark attorneys.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.

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