The trade mark Urban Ale from Urban Alley Brewery was found to be descriptive rather than distinctive, in a recent decision by the Federal Court of Australia. The registration which the owner had sought to enforce for Urban Ale, was therefore cancelled.
The owner had brought proceedings for trade mark infringement and misleading or deceptive conduct against competitor La Sirène, which was using the trade mark URBAN PALE on its branded beer cans. La Sirène counter-claimed, arguing that the Urban Ale trade mark should not have been registered as it was not distinctive of beer.
In short, the competitor’s counter-claim was successful. An order to cancel the Urban Ale trade mark was issued on the basis that it was not to any extent, inherently adapted to distinguish the goods for which it was registered in class 32 (being beer).
In its decision the Court found that the words Urban Ale are commonly used by traders that produce and retail beer products. This is based on the definition of Urban meaning ‘relating to a town or city’ together with Ale, a type of beer. The Court found that over time the combined words Urban Ale had lost their distinctive quality and that other beer producers and retailers should be able to use these words, without improper motive, to describe their beers.
Why is this important?
This is a timely reminder for businesses to steer clear from using descriptive words and/or phrases when selecting trade marks. The best trade marks come from unique and invented words; think Spotify, Kodak or Spandex. The decision also highlights the fact that merely possessing a trade mark registration is not necessarily enough (or the “beer all and end all?!”). If a trade mark owner wants to enforce their trade mark registration via the courts they should expect the court to closely investigate the validity of the trade mark registration.
The full Urban Ale decision can be read here.
Authors: Simon Gapes, Senior Associate
Bridget Renehan, Lawyer