This article first appeared in NZLawyer magazine and is an expanded version of an article Ben Cain wrote on 11 July.
Ben Cain discusses the use of descriptive or generic terms as trade marks in New Zealand in light of the recent "radler" decision from IPONZ and the furore over cheesemakers' use of 'vintage'.
What's in a name?
In 1600, the Bard penned the now immortal words for Juliet as
she contemplates Romeo's lineage:
What's in a name? that which we call a rose
By any other name would smell as sweet;
[Act II, Scene II]
In 2011, following the decision in DB Breweries Ltd vs Society of
Beer Advocates, Inc [2011] NZIPOTM 19 (13 July 2011) regarding
DB's 'radler' trade mark, the answer to Juliet's
question might well be framed in the negative: "that which
we call a radler by any other name would not taste as
citrusy". In the same (blue) vein might be the
response to Fonterra's recent notices to New Zealand
cheesemakers to avoid using the word 'vintage': "that
which we call a cheese by any other name would not taste as
rich".
As we all now know, unless you have been off-planet or hiding under
a rock, DB was successful in maintaining its registration for
'radler' much to the chagrin of beer drinkers, not to
mention John Campbell and the team at 'Radler Live'. If
proceedings are in due course issued in respect of Fonterra's
'vintage' trade mark, the same outcome might eventuate.
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
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.
DB Breweries Ltd vs Society of Beer Advocates, Inc
On 4-6 May 2011, before Assistant Commissioner Jones of the
Intellectual Property Office of New Zealand, the Society of Beer
Advocates, Inc (SOBA) sought to revoke DB's
trade mark registration for the word 'radler'.
SOBA submitted two arguments. First, SOBA argued that when DB
filed its application to register 'radler' in 2003,
'radler' was a known descriptive term for a beer-based,
shandy-style drink and as such the word was not capable of
distinguishing DB's product from those of other brewers.
Consequently, the trade mark registration should be declared
invalid. Second, in the alternative, SOBA argued that
'radler' had become a common name in general public use for
a style of low-alcoholic beer as a result of DB's acts or
inactivity.
In support of its arguments, SOBA presented incontrovertible
evidence that as at the relevant date in 2003 radler was a known
style of beer in New Zealand. SOBA also presented evidence that
other traders - such as the now infamous Green Man Brewery - would
likely want to use, and had wanted to use, the 'radler'
name in the course of their business and without any improper
motive in connection with their own goods.
SOBA also presented evidence that DB had itself, from day one,
marketed its radler beer as a style of beer. Such evidence included
wording on the packaging for 'Monteith's Classics
Range', references in promotional recipe books and even as part
of the tour guides' spiel at the Monteith's Brewery in
Greymouth. Supplementing SOBA's material were admissions and
references in DB's own evidence to 'radler' being a
style of beer.
If the Assistant Commissioner needed any further convincing, SOBA
argued that it was no mysterious co-incidence that the
"backstory" for DB's radler beer was exactly the same
as every other radler beer in the world, including for
'Barefoot Radler' brewed by DB's arch-rival, Lion
Nathan, in Australia.
A reasonable person would think, then, that on the strength of the
evidence, SOBA should have succeeded on at least one ground.
DB of course opposed and denied SOBA's arguments, adopting the
strategy that 'the best form of defence is attack'. In
carrying out its strategy, DB attacked the validity of SOBA's
standing as an aggrieved person, its motives for bringing the
proceedings, the validity of its evidence, in particular the
credibility of its witnesses, and by denying that consumers would
(a) read and (b) interpret the following text on its packaging
according to its plain and ordinary meaning:
There are six styles of beer in the Monteith's Classics
Range:
Original Ale / Golden Lager / Black Beer / Celtic Red Beer /
Pilsner Beer / Radler Bier
Six styles of beer, of which 'Radler Bier' is identified as
one. No, DB argued, radler is a brand, not a style of beer. To
borrow from another kiwi beer brand: yeah, right.
A reasonable person would think, then, that on the strength of
DB's own admission that radler is a style of beer, SOBA should
have succeeded on at least one ground.
Sadly, for brewers and beer consumers in New Zealand, Assistant
Commissioner Jones did not think so. Instead, the Assistant
Commissioner found against SOBA on every ground.
DB's victory is, however, a Pyrrhic one. The public backlash to
the decision, as seen through news and current affairs media,
social media and conversations in bars up and down the country,
clearly bears witness to that.
Significantly, and regardless of the outcome, the radler case - and
the 'vintage' furore - highlight the need for
business owners, marketers, and branding professionals to avoid
choosing and trying to register descriptive or generic names as
word trade marks for goods or services. Avoiding descriptive or
generic names may save the costs of defending successful trade mark
registrations from invalidation or revocation proceedings - as DB
found out to its expense and Fonterra may yet.
The key learning for business owners, marketers and branding professionals - choose a distinctive name
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 the same or
similar name, without improper motive, in connection with their own
goods or services, registration of that name as a trade mark should
be refused. Period.
Unfortunately, due to human fallibility, a descriptive or generic
name occasionally gets through the cracks in the intellectual
property system and is registered as a trade mark, resulting in an
unfair monopoly to the trade mark owner and the deprivation of
choice for businesses and consumers in New Zealand.
'Radler' is one such trade mark, regardless of the
Assistant Commissioner's decision, since it is a 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.
But as a consequence of the Assistant Commissioner's
affirmation of DB's monopoly over the use of the word radler,
no other brewer can use radler as a trade mark to properly denote a
radler beer in New Zealand. If other brewers use radler in a
descriptive way, such as "Cyclist - a radler-style beer",
then technically speaking this will not amount to trade mark
infringement under the Trade Marks Act as radler is not being used
'in a trade mark sense'.
'Vintage' is arguably another such trade mark, as it is a
descriptive term for a particular style of cheese (and not an
alternative word for 'aged' or 'mature') if New
Zealand cheesemakers are to be believed - and from my own research,
there is convincing evidence that they should.
Another registered trade mark which could also be strongly argued
was a descriptive term at the time its owner applied to register,
or has become a common name in general public use, is the word
'batts'. The word 'batt' derives from the word
'batting' and originated in c. 1830-40. The word
"batting" appears to have originated in c. 1605-1615 and
is still used today to describe fibreglass batting, which are
sheets of insulation material. In New Zealand, one company - Tasman
Insulation - has a trade mark for the word 'batts'. It has
owned this registration since 1973. Now it may be that when Tasman
Insulation applied to register the word in 1973 it was not known as
a descriptive term for insulation material in New Zealand, but this
of course does not mean it was not a descriptive term at all.
Furthermore, even if the word 'batts' could function as a
trade mark in 1973, there is a strong argument now to say it no
longer can since so many traders are using 'batts' to
describe a type of insulation product.
Expert's recommendation: what to do when developing or choosing a brand name
When developing or choosing a brand name for a product or
service, business owners, marketers and branding professionals are
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 trade
mark attorney from the outset to avoid doing so;
2.CONSULT your 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 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.
And finally, if you do manage to register a descriptive or generic
term, do the decent thing for New Zealand business and consumers if
challenged - concede gracefully and allow competition to flourish
for the benefit not just of New Zealand consumers but the economy
as a whole.
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.
