News & Insights

Urban Alley has been delivered a swift final blow in its battle over beer trade marks.

Earlier this year, the brewery failed to establish that a competing brewery infringed its trade marks and instead had two of its own trade marks cancelled by the Federal Court. Urban Alley’s appeal was dismissed in November, with costs awarded to the other brewery.

a dispute brewing

Urban Alley Brewery Pty Ltd (Urban Alley) held a trade mark registration for “URBAN ALE” in class 32 for beer, with a priority date of 14 June 2016 (Urban Ale Mark).

Another craft brewery, La Siréne Pty Ltd (La Siréne) produces and sells craft beer under its brand name La Siréne.  La Siréne had been using the word “urban” in connection with its business before Urban Alley’s priority date and began using the name “URBAN PALE” (Urban Pale Mark) on its label (depicted below).

Urban Alley commenced proceedings against La Siréne, arguing its use of the Urban Pale Mark contravened section 120 of the Trade Marks Act 1995 (Cth) (the Act), constituted misleading and deceptive conduct under the Australian Consumer Law and amounted to passing off.

La Siréne counter-claimed and sought cancellation of the Urban Ale Mark under section 88 of the Act, arguing that the mark was not capable of distinguishing Urban Alley’s goods. La Siréne subsequently sought registration for “FARMHOUSE STYLE URBAN PALE BY LA SIRÉNE” and the associated logo in class 32. Their applications were successful and not opposed by Urban Alley, however Urban Alley did seek to cancel those registrations during the proceedings.

descriptive or crafty?

The Federal Court found that the Urban Ale Mark was not inherently adapted to distinguish Urban Alley’s beer products from those of other producers. The Court agreed that the word “urban” indicated the beer was brewed in a city (or urban) location and that “urban” had become associated with craft beer. Further, “urban ale” did not refer to a particular variety or flavour of beer. Accordingly, the Urban Ale Mark was cancelled.

Although the Urban Ale Mark’s cancellation meant the infringement claims against La Siréne were dismissed, the court briefly considered Urban Alley’s infringement claims and La Siréne’s defences.

The Court concluded that regardless of the cancellation, La Siréne had not infringed the Urban Ale Mark as it used the words “Urban Pale” as a product name rather than a trade mark. Rather, the words “By La Siréne” on the product label depicted the source of the beer. The Court also accepted La Siréne’s defence of good faith because it used the words “Urban Pale” to indicate a quality or characteristic of the beer.

Urban Alley also failed to make out its claims for misleading and deceptive conduct and passing off since it could not show the Court it had a reputation in the Urban Ale Mark.  It was also unsuccessful in seeking cancellation of La Siréne’s registrations.

urban alley frothing on appeal

Urban Alley appealed the Federal Court’s decision, submitting that the primary Judge erred in cancelling the Urban Ale Mark and in finding that La Siréne had not used the words “Urban Pale” as a trade mark. It also challenged the primary Judge’s findings that La Siréne had defences available to it under the Act and that there were no grounds for cancellation of La Siréne’s registrations.

The Court disagreed with Urban Alley’s arguments, dismissing the appeal and awarding costs to La Siréne. In particular, the Court of Appeal found the primary Judge was correct in finding the Urban Ale Mark was descriptive and laudatory and therefore subject to cancellation.

something to sip on

Investing in descriptive brand names is risky. When developing a new brand, it is always best for businesses to find a distinctive name, such as using uncommon or invented words. Seeking input from intellectual property specialists early in the brand development process will protect businesses from facing a similar fate to Urban Alley. If you are thinking of establishing a new brand, speak to our Intellectual Property team first to get their insight.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.