The Full Federal Court today dismissed Stone & Wood’s appeal of an earlier decision clearing Thunder Road’s use of the name ‘Pacific Ale’ on a rival beer.
The Federal Court ruled in July 2016 that Stone & Wood had not established its misleading or deceptive conduct, passing off and trade mark infringement claims against Thunder Road.
That decision was upheld on Friday March 9, 2018, by a panel of three senior judges including the court’s top official, Chief Justice James Allsop.
“Where customers abbreviate to Pacific Ale or ‘Pac Ale’, that is often in premises where only one of Stone & Wood or Thunder Road are sold. Such a use does not demonstrate that any use of Pacific or Pacific Ale is a reference to or recognition of Stone & Wood’s reputation,” the judges said.
“Stone & Wood have not demonstrated any error in the findings of the primary judge.”
The Full Federal Court ordered that the appeal by Stone & Wood be dismissed with costs.
Pleasing decision: Thunder Road
Thunder Road owner Phillip Withers told Brews News he is pleased with the judges’ decision.
Quoting from the decision, Withers said the Full Court held that: “The words ‘Pacific Ale’ and ‘Pacific’ do have (as the primary judge found) a ‘descriptive’ quality: that is, the word is apt to connote or evoke imprecise senses that do not distinguish the product.”
“In summary, the decision of all four judges in both these Federal Court cases now is very clear. Even as a layperson, l can understand their decision,” Withers said.
“A lot of money has been spent by both sides. I could think of a lot better things to spend it on.”
Not over yet: Stone & Wood
This judgement is the closure of “just one chapter” in Stone & Wood’s long drawn out battle to protect its IP, co-founder Jamie Cook said in a statement to Brews News.
“It wasn’t about winning or losing, it was about making a stand on behalf of our community (our team, customers, drinkers, and suppliers), it was also about making a stand for originality and creativity,” he said.
“There are a lot of businesses in this industry that search for new spaces and create new directions. It’s fine for the rest of the industry to capitalise on the momentum created by that if it’s done in a respectful way.
“We also understand it’s a cluttered market and occasionally we, as an industry, unknowingly step on each other’s toes. In those situations, we can usually sort it out brewer to brewer. In fact, we have demonstrated an ability to do just that in the past and have changed our branding when we accidentally used a beer name that had been used by another brewer.
“Our stance is about trying to maintain a respectful industry.
“Meanwhile we are now left with continuing our efforts to have our IP protected via the trade mark process, by dealing with the current opposition to the Pacific Ale Trade Mark registration, which will take some time to resolve,” said Cook.
Trade mark dispute still on foot
Thunder Road’s appeal of the Australian Trade Marks Office decision relating to ‘Pacific Ale’ is in its early stages.
The Melbourne brewer failed to establish either of its grounds of opposition to the trade mark, the Australian Trade Marks Office ruled in August 2017.
The Federal Court was due to hear Thunder Road’s appeal in February 2018, but the proceedings were adjourned pending today’s decision.
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.
What about Wild YaK? It’s a Pacific Ale too, shouldn’t Stone & Wood go after them as well?
Wild Yak do not call it self Pacific Ale but use it as a style. The Thunder Road , Philip Withers is trying to profit on the name of the beer as stated on his label. If he said that it is a Pacific ale styled beer then I do not think anyone would object. If a person walked in to a pub and asked for a Pacific Ale thinking they would get a Stone & Wood and got a Thunder Road beer I’m dam certain that they would be P’d off. I know I would.
If a Thunder Road Pacific Ale was served up to me I would refuse to pay and throw it back at the server.
CUB have the right to use the name Pacific Ale. Explained towards the end of this article. https://www.brewsnews.com.au/2017/02/28/pacific-ale-disputes-rumble-on/
Yes, CUB use term Pacific Ale also as a descriptor as do some other breweries . Due to threats from Stone we stopped using the term Pacific Ale and sold very little beer with that descriptor . Despite this , we were sued in court and had no alternative but to defend ourselves. We never made money but accrued large losses from the action. Any beer we did sell after that was under the registered trademark Thunder Road Pacific. Four judges concluded we did nothing wrong. I really cannot add any more as that is all there is to it.
In reply to Dogs’ comment. Maybe customers should be more specific when ordering beer! If they asked for a Stone & Wood Pacific Ale then they wouldn’t be served something different.
Brand vs Style As Stone & Wood reluctantly let slip many years ago Pacific Ale is a Style not a Brand. You are not allowed to copy a Brand but anyone can copy a Style.