Brewers gear up for fierce trademark showdown over beer

By James Wan

What you need to know (in a nutshell)

  1. Thunder Road Brewing Company, a Melbourne brewery, is taking on Carlton and United Breweries (CUB) over the trademark of more than 50 beer labels.
  2. Thunder Road is hoping to remake many of Australia’s historic and forgotten beers and argues that CUB, which is part of South African-owned Foster’s, no longer uses the historic labels and should not be able to retain the trademarks.
  3. Carlton and United Breweries says the labels are part of the company’s own history and will vigorously defend its ownership of the marks.

Full Article

A Melbourne brewery, Thunder Road Brewing Co., is challenging CUB over the trademark of more than 50 beer labels, in an attempt to resurrect historic beers. It’s aiming to bring back some of Australia’s old and forgotten beers.

The historic labels of South African-owned Foster’s subsidiary, CUB, should not be allowed to keep their trademarks.

Philip Withers, CEO of Thunder Road, advocates for consumers to be able to buy beers that reflect Australia’s rich beer heritage. Mr Withers accused CUB of stockpiling trademarks to keep their dominant position in Australia’s brewing industry.

Examples of regional lagers such as Richmond and its eponymous brewery, until it was sold to CUB in the 1960s, demonstrate how many have been lost due to corporate takeovers.

McCracken’s, a mark from the mid-19th century, is another example of Australia’s brewing history which has nearly been forgotten. This story should be told and remembered.

CUB insists their labels are part of its history.

Jeremy Griffith, Director of Corporate Relations at CUB, has asserted the firm will robustly defend its trademarks. Our beers are fundamental to us; they’re part of our history and heritage, so we value them greatly. He likened the situation to someone taking Monaro from Holden, which most people would consider unreasonable. Being part of our history and heritage, these beers are vital to who we are as an organisation. We suggest Thunder Road brew its own beer and create its own unique heritage.

Evolving tastes

A December IBIS World report outlines the evolving beer market in Australia. Consumers are increasingly turning away from big-name beer brands towards craft beers, wine and cider. Craft beer is the star of an otherwise sluggish beer industry, according to Naren Sivasailam from IBIS World. He stated craft beer production accounts for around 2-2.5% of total brewing output.

Australians are now drinking better quality drinks despite consuming less, a significant change from ten years ago. Craft beer production has risen significantly in the past 10 years, now accounting for 2-2.5% of total beer output.

Premiumisation is rising in the food and beverage sector, with more imports of premium European beers. This has been driven by increased manufacturing as well. We now produce many international beers, such as Heineken and others, which are highly sought-after abroad. Consumer demand has seen the popularity of Mountain Goat and James Squire soar in both retailers, pubs, and bars.

A trademark dispute is underway

The many labels involved make the trademark disagreement between Thunder Road and CUB convoluted, according to Professor Michael Handler of the University of New South Wales.

Handler is confident CUB can make a persuasive case for keeping the marks. He argued CUB has a lingering reputation with many of the marks being challenged.

Craft beer consumers likely recognise and associate CUB with historical trademarks.

Unlicensed use of CUB’s marks could confuse the market, which is an important factor for registrars when deciding whether to retain a mark on the register.

Handler suggests that, even if Thunder Road wins this case, CUB could pursue their residual reputation argument through other channels such as passing off.

If Thunder Road misuses the marks, then CUB can leverage its reputation to take legal action under Australian Consumer Law or for passing off.

Traditional recipes

These labels haven’t been used in the last 3 years, as required under trademark law.

Thunder Road didn’t request access to old beer recipes.

Research is underway to recreate original beer recipes based on the labels.

Withers claims nearly all labels are forgotten. He stressed that to bring labels back, they must not have been used previously.

We can invoke non-use action under the Trademarks Act as these labels haven’t been used in three years.

CUB periodically releases heritage beers

Our Heritage Program is a great initiative, allowing us to release special beers into the market. We need to manage demand for these products, and releasing them every few years keeps consumers interested.

Prof. Handler suggests the case might have wider ramifications.

He suggested other firms with large portfolios of unused trademarks may be vulnerable to challenges.

We face a challenge as discretion plays a role in these situations, unlike the straightforward use-it-or-lose it approach.

IPAustralia states that most trademark disputes are solved within 3 months of the hearing.