A trademark storm is brewing in Melbourne

Thunder Road Brewing’s move to revive some old Carlton United brands has the beer bottler frothing says solicitor Alison Eveleigh, in a piece that first appeared in Encore.

In a noble move to enrich Australia’s cultural and historical legacy, boutique brewer Thunder Road Brewing is looking to revive many of Australia’s heritage beer brands including Brisbane Bitter, Cairns Draught and Ballarat Bitter. However, their plans have gone slightly ‘a-rye’ as Carlton United Breweries (CUB) currently holds trademark rights in the historic labels. Before the pints can be pulled, Thunder Road Brewery must have approximately 60 trademarks removed from the trademark register. The company is seeking to have CUB’s trademarks revoked on the basis they are no longer used by the brewing giant, a point vigorously contested by CUB.

And so the parties have hopped off to court. The bitter dispute was heard by a delegate of the registrar of trademarks at IP Australia in Melbourne in April this year. Under the Trade Mark Act 1995, a trademark may be removed from the register where there has been no use, or no use in good faith, of the trademark for three years (an application cannot be made until after five years have passed from the original filing date). Any person can apply to have a trademark removed from the register, provided they are willing to pay the application fees involved, thought to be approximately $13,000 in this instance.

The opponent then bears the thirsty task of either demonstrating the necessary use or satisfying IP Australia that circumstances had prevented use, but that registration should continue.

This trademark war may be likened to a bar-room brawl. During the hearing, CUB argued that they had not abandoned the trademarks, pointing to the release of commercial batches of the heritage beers from time to time, which were sold in pubs and through outlets such as Woolworths and Dan Murphy’s. Thunder Road suggested that these releases were not genuine use of the marks, but merely a sham to retain the trademarks.

Ultimately the decision rests with IP Australia, which has a broad discretion and will consider each mark on a case by case basis. In addition to actual use, the delegate will look at factors such as residual reputation in the market. Even if Thunder Road legitimately gains use of the trademarks, consumers may still associate some or all of the labels with CUB. If the use of the labels by Thunder Road suggests an association or connection between Thunder Road and CUB where no such connection exists, there may be an infringement of the Australian Consumer Law (ACL).

IP Australia’s decision is likely to be handed down in approximately three months time. For stubby trademark holders, this case is a timely reminder that you should sit back, crack open a cold one and take a good look at your trademark portfolio; ensure that you are using your trademarks. Remember, such use must be ‘as a trademark’ to distinguish your goods or services from those of other traders; and have another beer.

Legal eye is a monthly column from Von Muenster Solicitors and Attorneys who specialise in the media, marketing and entertainment industries.

This story first appeared in the weekly edition of Encore available for iPad and Android tablets. Visit encore.com.au for a preview of the app or click below to download.