Pacific Ale storm brews in the Federal Court, lessons for your brand protection strategy

August, 2016

By Stephanie Rowland, Partner and Amanda Wong, Associate.

Last month the Federal Court dismissed claims bought by Stone & Wood brewery against Thunder Road Brewing’s ‘Pacific Ale’ for misleading and deceptive conduct and false and misleading representations contrary to the Australian Consumer Law, passing off and trade mark infringement.[1]

What happened?

The Stone & Wood brewery in New South Wales has brewed and sold their ‘Pacific Ale’ beer since 2010. Thunder Road, based in Victoria, also launched a ‘Pacific Ale’ beer in 2015. Thunder Road’s ‘Pacific Ale’ was later renamed to simply ‘Thunder Road Pacific’ after Thunder Road received a letter from Stone & Wood’s solicitors threatening legal action.

Pacific Ale Article Photos

Stone & Wood claimed that Thunder Road engaged in misleading and deceptive conduct and made false and misleading representations contrary to the Australian Consumer Law and engaged in passing off. Subsequently Stone & Wood also claimed that Thunder Road infringed Stone & Wood’s registered trade mark (pictured).

Justice Moshinsky of the Federal Court dismissed Stone & Wood’s claims and found there were numerous differences in words and colours between the overall labelling and packaging of the two products (including that Thunder Road’s beer did not expressly reference ‘Stone & Wood’) and Stone & Wood did not posses a well-known reputation in the word ‘Pacific’. Stone & Wood’s claims for contravention of the Australian Consumer Law and passing off failed accordingly. The Court also held that Thunder Road had not infringed Stone & Wood’s registered trade mark – primarily because Thunder Road’s use of the words ‘Pacific Ale’ and ‘Pacific’ were not deceptively similar to Stone & Woods’ registered trade marks as the ‘dominant feature’ of the registered trade mark was the name ‘Stone & Wood’ and not ‘Pacific Ale’.

It is also noteworthy that the Court upheld Thunder Road’s counterclaim for unjustified threats of trade mark infringement under the Trade Marks Act 1995 (Cth), as Stone & Wood failed to establish that its trade mark was infringed and did not commence infringement proceedings with due diligence.

What does this mean for your business?

This current decision highlights the ongoing importance for brand owners to choose different and distinctive brands which are more easily enforced, and to ensure that, when filing trade marks, all the relevant elements of a brand are protected. If in doubt, brand owners should obtain expert guidance on an appropriate trade mark protection and enforcement strategy.

Contact Mills Oakley

For more information about your branding and trade mark protection and strategy contact:

stephanie-rowland

Stephanie Rowland | Partner

T: +61 8 6167 9806

E: srowland@millsoakley.com.au

stuart-gibson

Stuart Gibson | Partner

T: +61 3 9605 0092

E: sgibson@millsoakley.com.au

warren-scott

Warren Scott | Partner

T: +61 3 9605 0984

E: wscott@millsoakley.com.au

scott-coulthart

Scott Coulthart | Special Counsel

T: +61 7 3228 0437

E: scoulthart@millsoakley.com.au

paul-armarego

Paul Armarego | Special Counsel

T: +61 2 6196 5204

E: pamarergo@millsoakley.com.au

michael-fredericks

Michael Fredericks | Special Counsel

T: +61 7 3228 0464

E: mfredericks@millsoakley.com.au

jason-sprague

Jason Sprague | Special Counsel

T: +61 2 8289 5874

E: jsprague@millsoakley.com.au

[1] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820. Note that as at the date of publishing this article, Stone & Wood have filed a Notice of Appeal.

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