The Commissioner of Trade Marks' decision, released earlier today, not to cancel DB Breweries' trade mark registration for 'radler' is a sad day for common sense, says one of New Zealand's top patent and trade mark attorneys.

Ceri Wells, a founding partner in James & Wells Intellectual Property, took on the case for free on behalf of the Society of Beer Advocates (SOBA), because in his view DB's registration of what is a descriptive word for a style of beer amounted to an abuse of the trade mark registration system.

"Now New Zealand is the only country in the world where only one company can market radlers and the public is not able to buy and enjoy a genuine imported radler. I was happy to work on this for nothing, because I think the 'radler' trade mark is morally and commercially repugnant."

James & Wells based SOBA's legal case on the history of radler beers, which the Society says originated in Germany about 90 years ago when thirsty cyclists ("radlers" in German) and hikers were served a quenching mix of lager, soda and citrus juice.

The popularity of the drink spread throughout Western Europe, the UK and into North America as a low alcohol option, and latterly it arrived in Australasia where the style has been interpreted as a full strength beer flavoured with citrus.

Several different brands of radler were sold in New Zealand, until DB successfully registered 'radler' as a trade mark - which means that in New Zealand, only DB can use the word 'radler' to describe a radler drink. This has not been allowed in other countries.

"This was a clear attempt by a dominant market player to impede competition from others wanting to produce or market a radler-style beer.

"Using its trade mark, DB was able to stop Dunedin's Green Man Brewery from marketing an authentic low-alcohol radler, and stop supermarkets stocking imported radler-style beers," says Ceri Wells.

To get the Commissioner to cancel DB's registration for Radler, SOBA had to prove one of several grounds, including whether a significant number of New Zealanders recognised radler as the name of a beer style, or that other brewers were likely to want to use the radler name in relation to their own beverages, when DB registered the word. Alternatively, SOBA had to prove that the word radler had become a common term in general usage due to DB's product and its marketing.

Despite numerous testimonies from SOBA's witnesses, clear evidence of other brewers and retailers wanting to legitimately use and actually using the radler name in relation to beer in New Zealand after the date of DB's registration, and a survey that showed more people recognised radler as the name of a style than as a brand, the Commissioner of Trade Marks found that this was not enough to show that radler was a generic term.

"Allowing DB's registration to stand is a defeat for common sense, because it is akin to only one beer manufacturer being able to market pilsners or lagers," says Ceri Wells.

"The decision illustrates how difficult it is under New Zealand law to cancel a trade mark registration for a descriptive term which should be free for all to use."

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