Urban Alley's Grounds of Appeal (Urban) Pale Before the Full Court

What you need to know

• The Full Court has confirmed that the words URBAN ALE are descriptive for beer products, being associated with beer produced in an inner city location, and are therefore not registrable for beer.
• Where words might not convey the same idea/meaning in a side-by-side comparison for substantial identity, those words might still convey the same idea/meaning when recalled with an imperfect recollection under the test for deceptive similarity.

What you need to do

• Consider whether your mark contains any, even recently evolved, descriptive qualities and how this might affect registration prospects and/or the validity of your mark.
• Consider the principles of the relevant test as the tests for substantial identity and deceptive similarity call for different comparisons.
• Consider securing logo versions of marks which may be considered potentially at risk of a challenge. 

In the lead up…

Before the primary judge, Urban Alley Brewery Pty Ltd's (Urban Alley) trade mark "Urban Ale" (Urban Alley Mark) was cancelled under s 88(1)(a) of the Trade Marks Act 1995 (the Act) for failing to meet the requirements under both ss 41(1) or 44(1).  This was because the words URBAN ALE were found to have become descriptive, being synonymous with craft beer products produced in an inner city location. Further, the Urban Alley Mark was found to be deceptively similar to a prior registration (by an unrelated entity) for URBAN BREWING COMPANY (the Urban Brewing Mark).  For full coverage of the first instance decision, we refer you to our article published earlier this year here.  

Lack of Distinctiveness

At the crux of this issue was whether a "characteristic" of beer could extend to the location in which it was brewed.  The primary judge and the Full Court both agreed that it does.  

Based on the evidence before the Court it was found that:

• Although the word "urban" when used in relation to beer does not hold significance in terms of beer style or flavour characteristics, it had "come to signify craft beer made in an inner city location".  
• The word “urban” attached not only to the brewery but also to the beer produced from the brewery.
• Other traders were legitimately using the word "urban" in relation to their beer products.

The Full Court therefore found that the primary judge had not failed to distinguish between a registration of a mark for “beer” and a registration of the same mark for a “brewery” (as submitted by Urban Alley) and that the primary judge had not erred in concluding that the word “urban” in relation to beer is descriptive and laudatory.  

This invalidated Urban Alley's contentions that the primary judge ought to have found that the Urban Alley Mark was inherently adapted to distinguish its beer products from those of other traders on the basis that it does not describe a style or flavour characteristics of beer.

Deceptive Similarity

Urban Alley submitted that as the words "brewing company" and "ale" had been described by the primary judge to “convey different things”, the two marks could not therefore be deceptively similar.  

The Full Court rejected this because when the primary judge had made that comment, his Honour was conducting the side-by-side comparison required by the test for substantial identity.  The test for deceptive similarity is different and involves a comparison between one mark and the impression retained of another which gets hypothetically recalled with a potentially imperfect recollection, so the differences which those "things" convey may not be so great when relying on an imperfect recollection alone for establishing deceptively similarity.

In response to Urban Alley's submission that there was “no relevant trade mark resemblance” between the words “ale” and “brewing company”, the Full Court criticised Urban Alley for requiring the Court to dissect the individual elements of the marks as opposed to viewing them as a whole, which is the main requirement of the test for deceptive similarity.

Outcome

The Urban Alley Mark was deemed invalid for lack of distinctiveness and deceptive similarity and therefore  cancelled under s 88(1)(a) of the Act.  The appeal was dismissed with costs awarded against Urban Alley.

*A version of this article first appeared on WTR Daily, part of World Trademark Review, on 3 December, 2020.  For further information, please go to www.worldtrademarkreview.com.