Australia: Fighting to retain heritage beer brands - A CUB trade mark success story

In the largest set of opposition proceedings in Australian trade mark history, iconic Australian brewer CUB has emerged victorious from a dispute with a rival brewer intent on assuming control of a selection of CUB's heritage brands.

INTRODUCTION

A connection with the past can be a powerful force in attracting custom. Marketers occasionally capitalise on the potency of collective nostalgia and restore classic brands to active duty on a full-time basis (MONACO BAR) or special release basis (MELLO YELLO). Once popular brands may be discontinued, but still remain in the affections of consumers (POLLY WAFFLE and TORANA).

From the brand owner's perspective, it often makes commercial sense to maintain statutory protection for discontinued or periodically used trade marks which possess substantial equity and the potential for successful redeployment.

The Trade Marks Act is often described as embodying a "use it or lose it" philosophy. Whilst that is true to a point, there are important factors that can militate against the commandeering of seemingly vulnerable brands.

Corrs is proud to have represented CUB in defeating a serious challenge to some of its much-loved heritage beer brands.

THE DISPUTE

Through Elixir Signature Pty Ltd (Elixir), Philip Withers operates Thunder Road Brewery in Brunswick, Melbourne. Another company controlled by Mr Withers, Intellectual Property Development Corporation Pty Ltd (IPDC), performs the brand-owning role for Thunder Road Brewery.

Mr Withers approached CUB in 2009 with a proposal to acquire or take a licence to use a selection of CUB's beer brands which had not been marketed for some time, but which remained of considerable value to CUB. These brands remained in the affections of a significant number of consumers and formed part of CUB's rich heritage. CUB had a track record of periodic releases of "heritage brands" and, after Mr Withers' approach, CUB filed fresh trade mark applications to enhance protection for key heritage brands.

Mr Withers and CUB could not agree on terms for Thunder Road Brewery using (or owning) any of the heritage brands. Through Elixir and IPDC, Mr Withers sought to assume control of CUB's heritage brands BALLARAT BITTER (and the associated Ballarat Bertie character), RICHMOND LAGER, BULIMBA (including the GOLD TOP brand), NQ LAGER and KENT. Elixir/IPDC's strategy included:

  • filing trade mark applications for the heritage brands;
  • seeking to remove CUB's registrations for the heritage brands on the ground of non-use; and
  • opposing, on grounds of "bad faith" and "lack of intention to use", CUB's freshly-filed applications for the heritage brands.

Elixir/IPDC broadened the dispute substantially by also seeking the removal of a raft of registrations for marks which CUB had not used in the previous three years and by opposing CUB's fresh applications for registration of some of those marks. This aspect of the attack included brands such as ABBOTS LAGER and TOOTHS and some historical labels for CARLTON DRAUGHT, MELBOURNE BITTER, CAIRNS DRAUGHT and BRISBANE BITTER.

At the request of the parties, the Trade Marks Office agreed to consolidate 5 of the oppositions by IPDC to CUB's trade mark applications and 54 of the oppositions by CUB to Elixir's removal applications. In its totality, the dispute became the largest set of opposition proceedings in Australian trade mark history.

Evidence spanned 32 declarations and the hearing was conducted over two days before a panel of three Delegates of the Registrar of Trade Marks. Decisions on the 59 consolidated oppositions were issued on 10 September 2013 in Intellectual Property Development Corporation Pty Ltd v CUB Pty Ltd [2013] ATMO 73 and CUB Pty Ltd v Elixir Signature Pty Ltd [2013] ATMO 74.

The sheer scale of the dispute was in large part a consequence of the removal in 2006 of the "person aggrieved" standing requirement from the non-use provisions of the Trade Marks Act. Previously, removal of a mark from the Register could only be sought by a person commercially disadvantaged by the registration. The abolition of the standing requirement meant that there was no filter in place to prevent Elixir/IPDC from filing removal applications in relation to brands in which they had no apparent interest.

THE REGISTRAR'S DECISION ON THE OPPOSITIONS TO CUB'S TRADE MARK APPLICATIONS

CUB prevailed in each of the five oppositions to its applications.

The Delegate of the Registrar declined to infer that CUB had filed its applications "purely as a defensive or tactical response to the interest Mr Withers had shown in regard to using [CUB's] prior registrations." More generally, the Delegate held that IPDC had not provided any evidence supporting the contention that CUB's filing of the applications fell short of the standards of acceptable commercial behaviour for the purposes of the "bad faith" ground of opposition.

On the issue of intention to use, the Delegate was not satisfied that IPDC's evidence shifted to CUB an onus to demonstrate an intention to use the marks. Nevertheless, the Delegate concluded that if the onus had shifted to CUB, the evidence of CUB sufficiently addressed any adverse inference that might be drawn from IPDC's evidence. The Delegate held that CUB genuinely intended to use the marks and this would be enough even if the primary motivation for filing the applications was to prevent use of the marks by Elixir/IPDC.

THE REGISTRAR'S DECISION ON THE 54 OPPOSITIONS TO REMOVAL

On the issue of intention to use, the Delegate was not satisfied that IPDC's evidence shifted to CUB an onus to demonstrate an intention to use the marks. Nevertheless, the Delegate concluded that if the onus had shifted to CUB, the evidence of CUB sufficiently addressed any adverse inference that might be drawn from IPDC's evidence. The Delegate held that CUB genuinely intended to use the marks and this would be enough even if the primary motivation for filing the applications was to prevent use of the marks by Elixir/IPDC.

CUB's evidence addressed a range of factors relevant to the exercise of the Registrar's discretion including:

  • CUB's non-abandonment of the marks;
  • existence of residual reputations in the marks on the part of CUB;
  • use of the marks in good faith before or after the relevant non-use period;
  • the prospects of confusion arising from removal of the registrations; and
  • the respective private commercial interests of the parties.

Elixir/IPDC focussed on the public interest in clearing out unused marks from the Register and contended that CUB was "acting as a roadblock to the freedom of other Australian companies from using historical trade marks" and that the geographically descriptive nature of marks such as BALLARAT BITTER was a policy consideration favouring "freeing up" such marks for use by others.

In a resounding victory for CUB, the Delegate applied the discretion to thwart Elixir/IPDC's ambitions to gain access to particular heritage brands, concluding as follows:

  • CUB cannot be said to have abandoned the marks in circumstances where it had periodically used the marks before and after the relevant period and had plans for further releases.
  • CUB had a residual reputation in the brands.
  • In the beer product category where branding commonly incorporates references to the (at least initial) site of production, the geographic significance of a mark like BALLARAT BITTER is likely to sustain, rather than dilute, the residual reputation in the mark.
  • CUB's private interests as owner of the marks in question and successor-in-title to the original brand owners prevailed over Elixir/IPDC's "mere desire to use a trade mark which is owned by someone else" (at [132]). Mr Withers' stated objective of "setting free" unused heritage trade marks did not withstand scrutiny.
  • The public interest in ensuring that the Register was clear of unused marks was outweighed by the public interest in avoiding consumer confusion. Confusion was a likely product of Elixir/IPDC's use of marks which possessed a residual reputation. Confusion was particularly likely where CUB retained ownership of (and used) other marks forming part of the same brand family as the marks being challenged. The Delegate considered that "a family of trade marks all of which contain a specific and significant identifying word should travel together, that is, they should belong to a single trade source if confusion is to be avoided" (at [144]).

The Registrar's decision affirmed CUB's long-held position that its heritage brands are of legitimate ongoing interest to it and that it is not open to other traders to commence use of those brands.

RELEVANCE TO OTHER OWNERS OF HERITAGE BRANDS

For brand-owning companies, especially those with long, successful and diverse histories, the Registrar's decisions should provide support for the preservation of heritage brands which another trader seeks to exploit. There is scope for the registration of brands released intermittently to survive attack even where non-use during the relevant three year period is established. Filing fresh trade mark applications for heritage brands is also a valid strategy if coupled with an intention to use the brands even if the owner is aware of the non-use issue and aware of another trader's interest in using the brand.

A person with ambitions to adopt a heritage brand without the permission of the original brand owner (or successor in business) faces a conundrum. The affection with which that brand is recalled creates the commercial incentive to appropriate the brand and provides the very basis for thwarting such ambitions.

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.

Most awarded firm and Australian deal of the year
Australasian Legal Business Awards
Employer of Choice for Women
Equal Opportunity for Women
in the Workplace (EOWA)

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Madderns Patent & Trade Mark Attorneys
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Madderns Patent & Trade Mark Attorneys
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
 
Email Address
Company Name
Password
Confirm Password
Position
Industry
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions