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Pacific Ale: Round three to Stone & Wood

August 4, 2017
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‘Pacific Ale’ disputes continue

Stone & Wood can proceed to register the trade mark ‘Pacific Ale’ after Thunder Road failed to establish either of its grounds of opposition in a hearing before the Australian Trade Marks Office.

The trade mark dispute is entirely separate to the Federal Court proceedings brought by Stone & Wood against Thunder Road, alleging misleading or deceptive conduct, passing off and trade mark infringement.

The Melbourne brewer won that initial case in July 2016 and the Full Federal Court is yet to rule on the subsequent appeal by Stone & Wood, adjourned since February.

However, Thunder Road – through its affiliate Intellectual Property Development Corporation (IPDC) – argued before the Australian Trade Marks Office (ATMO) in May that the Federal Court’s earlier findings were “fatal” to Stone & Wood’s application to register the Pacific Ale trade mark.

In his decision published this week, ATMO Hearing Officer Robert Wilson rejected this argument, finding that the word ‘Pacific’ had not come to describe a beer made using hops from Australia and New Zealand until after Stone & Wood Pty Ltd – the holding company that has since changed its name to Fermentum Pty Ltd – registered its trade mark in August 2011 (the ‘relevant date’).

“I am satisfied that this evolution of the term ‘Pacific’—from providing no indication of the type of hops used in a beer to becoming a descriptive term in which is does—did not occur until at least 2013,” he said.

“This is well after the relevant date. Accordingly, I am satisfied that at the relevant date the term ‘Pacific’ did not function as a descriptive term in relation to the type of hops used to make the beer to which it is applied.

“As to whether ‘Pacific’ might act as a geographical indicator of the region in which a beer is produced, I am not satisfied that this is so: the term is far too vague and non-specific to perform this function.

“The opponent has failed to satisfy me that at the relevant date the opposed trade mark was not capable of distinguishing the applicant’s goods from the goods or services of other persons,” the Hearing Officer said.

He concurred with the Federal Court finding that ‘Pacific Ale’ is not a ‘style’ of beer.

IPDC further argued that Pacific Ale was deceptively similar to the Pacifico trademark owned by AB InBev subsidiary Modelo Brands del Pacifico, which was also rejected by Wilson.

“In this case, the simple addition of an ‘o’ to the end of the word ‘Pacific’ creates aural, visual and conceptual differences which, in combination, are significant and sufficiently memorable such that deception or confusion are unlikely,” the Hearing Officer said.

Open to appeal
Wilson ruled IPDC had failed to establish either of its grounds of opposition and that the company
should pay Fermentum’s costs from the dispute.

He said Fermentum may proceed to register the Pacific Ale trade mark one month after his decision, dated July 13.

“If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders,” Wilson said.

In a statement, Stone & Wood CEO Ben Summons told Brews News: “Naturally we are really pleased with the decision. It’s been a fairly long journey to get to this point as our initial application dates as far back as 2011, but we are prepared to do whatever it takes to protect our brand.”

“While the decision is satisfying, it’s still early days and there’s a few balls in the air as to the final outcome and next steps. This of course could be subject to appeal, so we will see what unfolds,” he said.

Thunder Road managing director Philip Withers declined to comment.

Disclosure: Brews News’ founder Matt Kirkegaard was engaged as an independent expert witness in the Federal Court case by Stone & Wood. He has had no involvement in the reporting of these disputes.

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