Lion Nathan has recently successfully defended its trademarking of the word ‘NEW’ against a company seeking to trademark the logo for New South Brewing Company.

The successfully opposed Trade Mark

Following a hearing Trade Mark Office hearings officer, Bianca Irgang, determined that a “significant number of consumers would at the very least experience a reasonable doubtas to the existence of some sort of connection between the opponent’s [Lion Nathan] trade mark and the applicant’s trade mark.”

While the decision may, at first glance, seem reminiscent of New Zealand-based DB Breweries’ successful trade marking of Radler, the German word for ‘cyclist’, this decision came down to the peculiar facts of this case and would not seem to preclude the use of the word ‘new’ in relation to other beers in all cases. The decision in this case was based on the the emphasis of the word ‘NEW’ in the applicant’s trade mark.

In its judgement, the Trade Mark Office found that the trade mark contains a number of elements including the words NEW SOUTH BREWING COMPANY.

“The trade mark also contains the device element of the silhouette of a man holding up a glass. The words NEW SOUTH are rendered in large font on top of the smaller words BREWING COMPANY. The beginning of the word SOUTH is superimposed on the image and I note that the only word which is not (in any way) confused or superimposed on the image is the word NEW. The applicant has also rendered the word NEW in a different colour to the other words in its trade mark. I believe that all these factors focus and draw the eye to the word NEW which is also the first word in the trade mark,” the judgement says.

The relevance of the emphasis on ‘NEW’ was discussed at length by Lion Nathan in its submissions opposing the Trade Mark and provide a fascinating (for the beer geek) insight into the history of Tooheys beers leading up to the registration of ‘NEW’ as a Trade Mark, as well as the importance of names and brands in the world of big beer.

Below is an edited summary of the facts found relevant in this case:

Tooheys was established in Sydney in 1869 by John Thomas Toohey and James Matthew Toohey. In Tooheys’ first decades of operation the beers brewed were traditional English and German style dark beers, such as ales and porters.

The first beer brewed by Tooheys was known as “Tooheys Black Ale” and was manufactured using top fermenting yeast – a type of yeast which rises through the fermenting vat and is skimmed off the top. In the 1930s lighter lager beers became increasingly popular amongst Australian beer-drinkers. In 1931 Tooheys began to produce its first lager beer. The beer was called “Tooheys New Special”. Tooheys New Special was sold exclusively on tap under the name Tooheys New Special for the next 40 years. Following the release of Tooheys New Special, Tooheys Black Ale became known as “Tooheys Old”.

From 1971 Tooheys began to sell Tooheys New Special packaged in cans and bottles under the label “Tooheys New Special Draught”. In the meantime, the Tooheys New Special beer was still being sold on tap and the name of the beer was eventually shortened to “Tooheys New” in the early 1990s.

In 1998 Tooheys recognised that whilst the beer on tap sold very well under the name Tooheys New, the same beer sold in cans and bottles under the name “Tooheys Draught” was less popular so Tooheys decided to sell the beer under the name Tooheys New regardless of whether it was sold on tap or in its packaged form. There were very significant increases in the sale of packaged Tooheys New following the brand consolidation in 1998 while the sales figures for Tooheys New beer on tap remained constant since.

Tooheys New is the flagship beer of the Tooheys company and is the top selling tap beer in New South Wales and Australia’s second largest selling beer brand. Since the consolidation of the brand in 1998, in excess of one billion litres of Tooheys New have been sold nationally.

Millions of dollars have been spent on the marketing and promotion of Tooheys New. In 2004, 30.3% of Lion Nathan’s total expenditure on advertising and marketing across all of its brands was spent on the promotion of its Tooheys New.

The 1998 brand consolidation involved the introduction of the slogan “GIVE THAT MAN A NEW” this slogan has been used extensively since that time and at least until June 2003. GIVE THAT MAN A NEW has featured in many promotions in regional and metropolitan Australia featuring in television commercials, radio and print advertisements and on point of sale material and on every carton of Tooheys New sold between 2000 until at least June 2003. Additional slogans using a variation on the NEW theme such as “GIVE THAT TOWN A NEW…”, “CELEBRATE THE NEW WAY”, “THE NEW WAY” and “I LOVE NEW, I LOVE NEW, I LOVE NSW” were also used by Tooheys to promote Tooheys New. Tooheys also had an advertising campaign in 2004 and 2005 during the State of Origin Series with the slogan “TOOHEYS PUTS THE NEW IN NSW”.

Following the introduction of the slogan GIVE THAT MAN A NEW, with its emphasis placed on NEW rather than Tooheys New, coupled with the common Australian practice of shortening names whenever possible, both consumers and the trade to refer to Tooheys New simply as NEW and so Tooheys applied to register the word NEW as a trade mark.

As of today you could add Tooheys just-announced sponsorship of the Newcastle Knights to the list of ‘NEWs’ strengthening Lion Nathan’s objection.

Read the full judgement and reasons for the decision.