Insights / September 19th, 2017

Distinctiveness – beer and back again

The latest round of what appears to be a tit for tat in relation to the use of the words “Pacific Ale” is an application brought by Intellectual Property Development Corporation Pty Ltd ("IPDC") to oppose the registration of Stone & Wood’s Pacific Ale Mark.

Back in 2016, Justice Moshinsky considered a claim by Fermentum alleging that IPDC had infringed Fermentum’s composite trade mark (below) that included the words “Pacific Ale”.

Justice Moshinsky found for IPDC and held that the phrase “Pacific Ale” was descriptive when used in relation to beer and now described beers made from hops from Australia and New Zealand such that it was associated with the use of Australian Galaxy Hops. This decision has been appealed and we are awaiting the judgment.

It seems in response to Fermentum initiating the above proceedings, IPDC opposed the registration of Fermentum’s word mark (No. 1541641) for “pacific ale” (the “Word Mark”) on the basis that it did not distinguish Fermentum’s goods and services. No doubt IPDC thought the result in the 2016 proceedings would have boosted its chances of success.

Unfortunately for IPDC, however, the hearing officer:

  1. determined that whilst it was likely that Pacific Ale was now a descriptive term for beer using Australian and New Zealand Galaxy Hops, this was not the case in August 2011 when the application for registration of the Word Mark was filed; and

  2. rejected IPDC’s alternate argument that, if the Word Mark was distinctive, then it was deceptively similar to a 1987 trade mark for “Pacifico” on the basis that the simple addition of an “o” to the end of the word “Pacific” created - “oral, visual and conceptual differences which, in combination, are significant and sufficiently memorable such that the deception or confusion are unlikely”.

This case demonstrates that it is critical for parties to be aware of the strict requirements of the Trade Marks Act and the potential nuances that the English language can produce when it comes to trade marks.

If you have any questions about trade marks please do not hesitate to contact Rob Kennett or Andrew Bullock.

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