How litigation can lead to a flood of tears

Certainly since the mid 1990s there has been a significant growth in the craft beer market so much so that there are many websites now devoted to it.

From about 2008 the company Stone and Wood Group Pty Ltd has developed and sold a brand of craft beer known now as the “ Pacific Ale “ brand on line , in bottle shops and in pubs and clubs all over the country.

Its logo depicted the words “ Stone and Wood “ prominently with the words “ pacific ale “ in much smaller font.

The company now colloquially known as Thunder Road started selling its craft beer under its logo with the words “ pacific ale “ prominently displayed on its labels.

Stone and Wood sought to object to this and filed proceedings in the federal court seeking orders inter alia for misleading and deceptive conduct , passing off ,infringement of the trade marks act against Thunder Road.

They had 2 bites at the cherry…

On the first occasion the single judge held that they failed on all counts by reason of several matters to which I refer to below.

They then appealed to the full court. In a decision handed down this month the 3 judges held that their appeal had no proper grounds and dismissed it.

Both courts were satisfied that:

1. the words “ pacific ale “ were descriptive of the eastern seaboard of Australia and not a style of beer.
2. the craft beer consumers would quite easily distinguish between the 2 brewers products as they were educated connoisseurs of the brews.
3. by examining the logos and brands side by side they were completely different with divergent font colour and that the prominence of the words Stone and Wood meant that consumers attention was immediately drawn to that rather than the smaller font for “ Pacific Ale “.
4. that Stone and Wood had made “ groundless threats “ to bring proceedings for trade mark infringement on the first case

To assist you in examining the marks I have attached the relevant brands in bottles below.

Accordingly Stone and Wood were entirely unsuccessful and will have to pay a large costs bill for no good outcome.

The PBL key lessons we learn from this case are:

• Look before you leap into litigation
• Be sure to obtain proper and adequate advice before commencing a claim
• If you do commence a claim be sure to tick all of the boxes or elements you need to prove for misleading and deceptive conduct and passing off
• In passing off actions you will need to demonstrate more than just injury to your goodwill as there is nothing wrong with legitimate competition
• You will have to establish a misrepresentation or illegitimate conduct into a mistaken belief that the goods or services of the defendant are your goods and services and damage to your company or business

Lessons like this are important to learn if you want to enforce rights outside of contracts.

If you are interested in adding value to your business by way of developing intellectual property rights then contact David on 1300 965 689 or by email david.prior@prioritylawyers.com.au