Can you protect a trade mark which has descriptive elements?

The Full Court of the Federal Court recently dismissed an appeal by Urban Alley Brewery Pty Ltd (Urban Alley), a craft brew house after it appealed against a decision earlier this year by a single judge who ordered the registration of the Word Mark “urban ale” be cancelled.

Urban Alley sued La Sirène Pty Ltd (La Sirène) for infringement of its registered trade mark alleging it infringed it by using the words “Urban Pale” on a product it produced as below:  

In response La Sirène stated:

• La Sirène had not engaged in the conduct alleged, because La Sirène had not used URBAN PALE as a trade mark; and
• La Sirène had used the words URBAN PALE in good faith to indicate the characteristics of its beer product (i.e. the production location, colour, and type of beer).

Further La Sirène cross-claimed that Urban Alley’s URBAN ALE trade mark should be cancelled pursuant to section 88 Trade Marks Act 1995 (Cth) (Act) because (among other grounds) the mark was not capable of distinguishing Urban Alley’s goods from those of other traders.

La Sirène stated and the court accepted that the word ‘urban’ has been used in Australia in connection with inner-city breweries and beer products for a considerable length of time (and at least from 2010), both to craft beers and more mainstream products.

The Court at first instance accepted La Sirène’s arguments that:

• many traders had used the word ‘urban’ in relation to beer prior to the filing date of the URBAN ALE mark to describe inner city craft breweries and their beer products;
• URBAN ALE was not to any extent inherently adapted to distinguish Urban Alley’s beer products from those of other traders;
• Urban Alley had not developed a significant reputation in the URBAN ALE mark;
• La Sirène was unaware of Urban Alley’s use of the URBAN ALE mark prior to La Sirène adopting the words URBAN PALE in relation to its beer products;
• while Urban Alley had intended for the words URBAN ALE to come to mean a new style or flavour of beer, the words had not taken on that signification. Instead, they signified a craft beer brewed in an inner-city location, including via Urban Alley’s own use of the words;
• the packaging and labelling of La Sirène’s product differed in fundamental ways to the packaging of Urban Alley’s product. In particular, La Sirène promoted its URBAN PALE product as being produced by La Sirène; and
• the public interest would be adversely affected if the registration of the URBAN ALE mark continued, in part because the words URBAN ALE are ones which other traders may wish to use in connection with beer products and breweries for their ordinary signification.

This is a timely warning to businesses that just because you have a trade mark registered with descriptive aspects you run the risk of the mark being diluted and enforcement against a competitor difficult.

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